Appendix L - Patent Laws

United States Code Title 35 - Patents

[Editor Note: Updated April 2013. Incorporates the changes made by the
Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284 (Sept. 16, 2011)
and the Technical Corrections to the AIA, Public Law 112-274 (Jan. 14, 2013). Where either
the current statute or an earlier version thereof would be applicable under specified
conditions, the earlier version is indicated by the designation "(pre-AIA)" or
"(transitional)" following the statute number. Where the AIA sets forth detailed
applicability or effective date provisions these are paraphrased and indicated by the
designation "(note)" following the statute number at the begininning of the affected
chapter or section. Additional relevant uncodified law is reproduced immediately preceeding
the Selected Provisions of Title 18, United States Code in this
document.]

PART I - UNITED STATES PATENT AND TRADEMARK OFFICE

I

CHAPTER 1 - ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

1 Establishment.

2 Powers and duties.

3 Officers and employees.

4 Restrictions on officers and employees as to interest in
patents.

5 Patent and Trademark Office Public Advisory
Committees.

6 Patent Trial and Appeal Board.

6 (pre-AIA) Board of Patent Appeals and
Interferences.

7 Library.

8 Classification of patents.

9 Certified copies of records.

10 Publications.

11 Exchange of copies of patents and applications with
foreign countries.

12 Copies of patents and applications for public
libraries.

13 Annual report to Congress.

35 U.S.C. 1
Establishment.

(a) ESTABLISHMENT.— The
United States Patent and Trademark Office is established as an agency of the
United States, within the Department of Commerce. In carrying out its
functions, the United States Patent and Trademark Office shall be subject to
the policy direction of the Secretary of Commerce, but otherwise shall
retain responsibility for decisions regarding the management and
administration of its operations and shall exercise independent control of
its budget allocations and expenditures, personnel decisions and processes,
procurements, and other administrative and management functions in
accordance with this title and applicable provisions of law. Those
operations designed to grant and issue patents and those operations which
are designed to facilitate the registration of trademarks shall be treated
as separate operating units within the Office.

(b) OFFICES.— The United
States Patent and Trademark Office shall maintain its principal office in
the metropolitan Washington, D.C., area, for the service of process and
papers and for the purpose of carrying out its functions. The United States
Patent and Trademark Office shall be deemed, for purposes of venue in civil
actions, to be a resident of the district in which its principal office is
located, except where jurisdiction is otherwise provided by law. The United
States Patent and Trademark Office may establish satellite offices in such
other places in the United States as it considers necessary and appropriate
in the conduct of its business.

(c) REFERENCE.— For purposes
of this title, the United States Patent and Trademark Office shall also be
referred to as the “Office” and the “Patent and Trademark
Office”.

35 U.S.C. 2
Powers and duties.

(a) IN GENERAL.— The United
States Patent and Trademark Office, subject to the policy direction of the
Secretary of Commerce—

(1) shall be
responsible for the granting and issuing of patents and the
registration of trademarks; and

(2) shall be
responsible for disseminating to the public information with respect
to patents and trademarks.

(b) SPECIFIC POWERS.— The
Office—

(1) shall adopt and
use a seal of the Office, which shall be judicially noticed and with
which letters patent, certificates of trademark registrations, and
papers issued by the Office shall be authenticated;

(2) may establish
regulations, not inconsistent with law, which—

(A) shall govern
the conduct of proceedings in the Office;

(B) shall be
made in accordance with section 553 of title 5;

(C) shall
facilitate and expedite the processing of patent applications,
particularly those which can be filed, stored, processed,
searched, and retrieved electronically, subject to the
provisions of
section 122
relating to the confidential status of
applications;

(D) may govern
the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the
Office, and may require them, before being recognized as
representatives of applicants or other persons, to show that
they are of good moral character and reputation and are
possessed of the necessary qualifications to render to
applicants or other persons valuable service, advice, and
assistance in the presentation or prosecution of their
applications or other business before the
Office;

(E) shall
recognize the public interest in continuing to safeguard broad
access to the United States patent system through the reduced
fee structure for small entities under
section
41(h(1)
;

(F) provide for
the development of a performance-based process that includes
quantitative and qualitative measures and standards for
evaluating cost-effectiveness and is consistent with the
principles of impartiality and competitiveness;
and

(G) may, subject to any
conditions prescribed by the Director and at the request of the
patent applicant, provide for prioritization of examination of
applications for products, processes, or technologies that are
important to the national economy or national competitiveness
without recovering the aggregate extra cost of providing such
prioritization, notwithstanding section
41 or any other provision of
law;

(3) may acquire,
construct, purchase, lease, hold, manage, operate, improve, alter, and
renovate any real, personal, or mixed property, or any interest
therein, as it considers necessary to carry out its
functions;

(4)

(A) may make
such purchases, contracts for the construction, or management
and operation of facilities, and contracts for supplies or
services, without regard to the provisions of subtitle I and
chapter 33 of title 40, division C (except sections 3302,
3501(b), 3509, 3906, 4710, and 4711) of subtitle I of title 41,
and the McKinney-Vento Homeless Assistance Act (42 U.S.C. 11301
et seq.);

(B) may enter
into and perform such purchases and contracts for printing
services, including the process of composition, platemaking,
presswork, silk screen processes, binding, microform, and the
products of such processes, as it considers necessary to carry
out the functions of the Office, without regard to sections 501
through 517 and 1101 through 1123 of title 44;

(5) may use, with
their consent, services, equipment, personnel, and facilities of other
departments, agencies, and instrumentalities of the Federal
Government, on a reimbursable basis, and cooperate with such other
departments, agencies, and instrumentalities in the establishment and
use of services, equipment, and facilities of the
Office;

(6) may, when the
Director determines that it is practicable, efficient, and
cost-effective to do so, use, with the consent of the United States
and the agency, instrumentality, Patent and Trademark Office, or
international organization concerned, the services, records,
facilities, or personnel of any State or local government agency or
instrumentality or foreign patent and trademark office or
international organization to perform functions on its
behalf;

(7) may retain and use
all of its revenues and receipts, including revenues from the sale,
lease, or disposal of any real, personal, or mixed property, or any
interest therein, of the Office;

(8) shall advise the
President, through the Secretary of Commerce, on national and certain
international intellectual property policy issues;

(9) shall advise
Federal departments and agencies on matters of intellectual property
policy in the United States and intellectual property protection in
other countries;

(10) shall provide
guidance, as appropriate, with respect to proposals by agencies to
assist foreign governments and international intergovernmental
organizations on matters of intellectual property
protection;

(11) may conduct programs, studies,
or exchanges of items or services regarding domestic and international
intellectual property law and the effectiveness of intellectual
property protection domestically and throughout the world, and the
Office is authorized to expend funds to cover the subsistence expenses
and travel-related expenses, including per diem, lodging costs, and
transportation costs, of persons attending such programs who are not
Federal employees;

(12)

(A) shall advise
the Secretary of Commerce on programs and studies relating to
intellectual property policy that are conducted, or authorized
to be conducted, cooperatively with foreign intellectual
property offices and international intergovernmental
organizations; and

(B) may conduct
programs and studies described in subparagraph (A);
and

(13)

(A) in
coordination with the Department of State, may conduct programs
and studies cooperatively with foreign intellectual property
offices and international intergovernmental organizations;
and

(B) with the
concurrence of the Secretary of State, may authorize the
transfer of not to exceed $100,000 in any year to the Department
of State for the purpose of making special payments to
international intergovernmental organizations for studies and
programs for advancing international cooperation concerning
patents, trademarks, and other matters.

(c) CLARIFICATION OF
SPECIFIC POWERS.—

(1) The special
payments under subsection (b)(13)(B) shall be in addition to any other
payments or contributions to international organizations described in
subsection (b)(13)(B) and shall not be subject to any limitations
imposed by law on the amounts of such other payments or contributions
by the United States Government.

(2) Nothing in
subsection (b) shall derogate from the duties of the Secretary of
State or from the duties of the United States Trade Representative as
set forth in section 141 of the Trade Act of 1974 (19 U.S.C.
2171).

(3) Nothing in
subsection (b) shall derogate from the duties and functions of the
Register of Copyrights or otherwise alter current authorities relating
to copyright matters.

(4) In exercising the
Director’s powers under paragraphs (3) and (4)(A) of subsection (b),
the Director shall consult with the Administrator of General
Services.

(5) In exercising the
Director’s powers and duties under this section, the Director shall
consult with the Register of Copyrights on all copyright and related
matters.

(d) CONSTRUCTION.— Nothing
in this section shall be construed to nullify, void, cancel, or interrupt
any pending request-for-proposal let or contract issued by the General
Services Administration for the specific purpose of relocating or leasing
space to the United States Patent and Trademark Office.

35 U.S.C. 3
Officers and employees.

(a) UNDER SECRETARY AND
DIRECTOR.—

(1) IN GENERAL.— The
powers and duties of the United States Patent and Trademark Office
shall be vested in an Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office
(in this title referred to as the “Director”), who shall be a citizen
of the United States and who shall be appointed by the President, by
and with the advice and consent of the Senate. The Director shall be a
person who has a professional background and experience in patent or
trademark law.

(2) DUTIES.—

(A) IN GENERAL.—
The Director shall be responsible for providing policy direction
and management supervision for the Office and for the issuance
of patents and the registration of trademarks. The Director
shall perform these duties in a fair, impartial, and equitable
manner.

(B) CONSULTING
WITH THE PUBLIC ADVISORY COMMITTEES.— The Director shall consult
with the Patent Public Advisory Committee established in
section 5 on
a regular basis on matters relating to the patent operations of
the Office, shall consult with the Trademark Public Advisory
Committee established in
section
5
on a regular basis on matters relating
to the trademark operations of the Office, and shall consult
with the respective Public Advisory Committee before submitting
budgetary proposals to the Office of Management and Budget or
changing or proposing to change patent or trademark user fees or
patent or trademark regulations which are subject to the
requirement to provide notice and opportunity for public comment
under section 553 of title 5, as the case may
be.

(3) OATH.— The
Director shall, before taking office, take an oath to discharge
faithfully the duties of the Office.

(4) REMOVAL.— The
Director may be removed from office by the President. The President
shall provide notification of any such removal to both Houses of
Congress.

(b) OFFICERS AND EMPLOYEES
OF THE OFFICE.—

(1) DEPUTY UNDER
SECRETARY AND DEPUTY DIRECTOR.— The Secretary of Commerce, upon
nomination by the Director, shall appoint a Deputy Under Secretary of
Commerce for Intellectual Property and Deputy Director of the United
States Patent and Trademark Office who shall be vested with the
authority to act in the capacity of the Director in the event of the
absence or incapacity of the Director. The Deputy Director shall be a
citizen of the United States who has a professional background and
experience in patent or trademark law.

(2) COMMISSIONERS.—

(A) APPOINTMENT
AND DUTIES.— The Secretary of Commerce shall appoint a
Commissioner for Patents and a Commissioner for Trademarks,
without regard to chapter 33, 51, or 53 of title 5. The
Commissioner for Patents shall be a citizen of the United States
with demonstrated management ability and professional background
and experience in patent law and serve for a term of 5 years.
The Commissioner for Trademarks shall be a citizen of the United
States with demonstrated management ability and professional
background and experience in trademark law and serve for a term
of 5 years. The Commissioner for Patents and the Commissioner
for Trademarks shall serve as the chief operating officers for
the operations of the Office relating to patents and trademarks,
respectively, and shall be responsible for the management and
direction of all aspects of the activities of the Office that
affect the administration of patent and trademark operations,
respectively. The Secretary may reappoint a Commissioner to
subsequent terms of 5 years as long as the performance of the
Commissioner as set forth in the performance agreement in
subparagraph (B) is satisfactory.

(B) SALARY AND
PERFORMANCE AGREEMENT.— The Commissioners shall be paid an
annual rate of basic pay not to exceed the maximum rate of basic
pay for the Senior Executive Service established under section
5382 of title 5, including any applicable locality-based
comparability payment that may be authorized under section
5304(h)(2)(C) of title 5. The compensation of the Commissioners
shall be considered, for purposes of section 207(c)(2)(A) of
title 18, to be the equivalent of that described under clause
(ii) of section 207(c)(2)(A) of title 18. In addition, the
Commissioners may receive a bonus in an amount of up to, but not
in excess of, 50 percent of the Commissioners’ annual rate of
basic pay, based upon an evaluation by the Secretary of
Commerce, acting through the Director, of the Commissioners’
performance as defined in an annual performance agreement
between the Commissioners and the Secretary. The annual
performance agreements shall incorporate measurable organization
and individual goals in key operational areas as delineated in
an annual performance plan agreed to by the Commissioners and
the Secretary. Payment of a bonus under this subparagraph may be
made to the Commissioners only to the extent that such payment
does not cause the Commissioners’ total aggregate compensation
in a calendar year to equal or exceed the amount of the salary
of the Vice President under section 104 of title
3.

(C) REMOVAL.—
The Commissioners may be removed from office by the Secretary
for misconduct or nonsatisfactory performance under the
performance agreement described in subparagraph (B), without
regard to the provisions of title 5. The Secretary shall provide
notification of any such removal to both Houses of
Congress.

(3) OTHER OFFICERS AND
EMPLOYEES.— The Director shall—

(A) appoint such
officers, employees (including attorneys), and agents of the
Office as the Director considers necessary to carry out the
functions of the Office; and

(B) define the
title, authority, and duties of such officers and employees and
delegate to them such of the powers vested in the Office as the
Director may determine.

The Office
shall not be subject to any administratively or statutorily
imposed limitation on positions or personnel, and no positions
or personnel of the Office shall be taken into account for
purposes of applying any such limitation.

(4) TRAINING OF
EXAMINERS.— The Office shall submit to the Congress a proposal to
provide an incentive program to retain as employees patent and
trademark examiners of the primary examiner grade or higher who are
eligible for retirement, for the sole purpose of training patent and
trademark examiners.

(5) NATIONAL SECURITY
POSITIONS.— The Director, in consultation with the Director of the
Office of Personnel Management, shall maintain a program for
identifying national security positions and providing for appropriate
security clearances, in order to maintain the secrecy of certain
inventions, as described in
section
181
, and to prevent disclosure of sensitive and
strategic information in the interest of national
security.

(6) ADMINISTRATIVE PATENT JUDGES AND
ADMINISTRATIVE TRADEMARK JUDGES.—The Director may fix the rate of
basic pay for the administrative patent judges appointed pursuant to
section 6 and the
administrative trademark judges appointed pursuant to section 17 of
the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the
rate of basic pay payable for level III of the Executive Schedule
under section 5314 of title 5. The payment of a rate of basic pay
under this paragraph shall not be subject to the pay limitation under
section 5306(e) or 5373 of title 5.

(c) CONTINUED APPLICABILITY
OF TITLE 5. — Officers and employees of the Office shall be subject to the
provisions of title 5, relating to Federal employees.

(d) ADOPTION OF EXISTING
LABOR AGREEMENTS.— The Office shall adopt all labor agreements which are in
effect, as of the day before the effective date of the Patent and Trademark
Office Efficiency Act, with respect to such Office (as then in
effect).

(e) CARRYOVER OF PERSONNEL.—

(1) FROM PTO.—
Effective as of the effective date of the Patent and Trademark Office
Efficiency Act, all officers and employees of the Patent and Trademark
Office on the day before such effective date shall become officers and
employees of the Office, without a break in service.

(2) OTHER PERSONNEL.—
Any individual who, on the day before the effective date of the Patent
and Trademark Office Efficiency Act, is an officer or employee of the
Department of Commerce (other than an officer or employee under
paragraph (1)) shall be transferred to the Office, as necessary to
carry out the purposes of that Act, if—

(A) such
individual serves in a position for which a major function is
the performance of work reimbursed by the Patent and Trademark
Office, as determined by the Secretary of
Commerce;

(B) such
individual serves in a position that performed work in support
of the Patent and Trademark Office during at least half of the
incumbent’s work time, as determined by the Secretary of
Commerce; or

(C) such
transfer would be in the interest of the Office, as determined
by the Secretary of Commerce in consultation with the Director.

Any transfer under
this paragraph shall be effective as of the same effective date as
referred to in paragraph (1), and shall be made without a break in
service.

(f) TRANSITION PROVISIONS.—

(1) INTERIM
APPOINTMENT OF DIRECTOR.— On or after the effective date of the Patent
and Trademark Office Efficiency Act, the President shall appoint an
individual to serve as the Director until the date on which a Director
qualifies under subsection (a). The President shall not make more than
one such appointment under this subsection.

(2) CONTINUATION IN
OFFICE OF CERTAIN OFFICERS.—

(A) The
individual serving as the Assistant Commissioner for Patents on
the day before the effective date of the Patent and Trademark
Office Efficiency Act may serve as the Commissioner for Patents
until the date on which a Commissioner for Patents is appointed
under subsection (b).

(B) The
individual serving as the Assistant Commissioner for Trademarks
on the day before the effective date of the Patent and Trademark
Office Efficiency Act may serve as the Commissioner for
Trademarks until the date on which a Commissioner for Trademarks
is appointed under subsection (b).

35 U.S.C. 4
Restrictions on officers and employees as to interest in
patents.

Officers and employees of the
Patent and Trademark Office shall be incapable, during the period of their
appointments and for one year thereafter, of applying for a patent and of acquiring,
directly or indirectly, except by inheritance or bequest, any patent or any right or
interest in any patent, issued or to be issued by the Office. In patents applied for
thereafter they shall not be entitled to any priority date earlier than one year
after the termination of their appointment.

35 U.S.C. 5
Patent and Trademark Office Public Advisory
Committees.

(a) ESTABLISHMENT OF PUBLIC
ADVISORY COMMITTEES.—

(1) APPOINTMENT.— The
United States Patent and Trademark Office shall have a Patent Public
Advisory Committee and a Trademark Public Advisory Committee, each of
which shall have nine voting members who shall be appointed by the
Secretary of Commerce and serve at the pleasure of the Secretary of
Commerce. In each year, 3 members shall be appointed to each Advisory
Committee for 3-year terms that shall begin on December 1 of that
year. Any vacancy on an Advisory Committee shall be filled within 90
days after it occurs. A new member who is appointed to fill a vacancy
shall be appointed to serve for the remainder of the predecessor’s
term.

(2) CHAIR.— The
Secretary of Commerce, in consultation with the Director, shall
designate a Chair and Vice Chair of each Advisory Committee from among
the members appointed under paragraph (1). If the Chair resigns before
the completion of his or her term, or is otherwise unable to exercise
the functions of the Chair, the Vice Chair shall exercise the
functions of the Chair.

(b) BASIS FOR APPOINTMENTS.—
Members of each Advisory Committee—

(1) shall be citizens
of the United States who shall be chosen so as to represent the
interests of diverse users of the United States Patent and Trademark
Office with respect to patents, in the case of the Patent Public
Advisory Committee, and with respect to trademarks, in the case of the
Trademark Public Advisory Committee;

(2) shall include
members who represent small and large entity applicants located in the
United States in proportion to the number of applications filed by
such applicants, but in no case shall members who represent small
entity patent applicants, including small business concerns,
independent inventors, and nonprofit organizations, constitute less
than 25 percent of the members of the Patent Public Advisory
Committee, and such members shall include at least one independent
inventor; and

(3) shall include
individuals with substantial background and achievement in finance,
management, labor relations, science, technology, and office
automation. In addition to the voting members, each Advisory Committee
shall include a representative of each labor organization recognized
by the United States Patent and Trademark Office. Such representatives
shall be nonvoting members of the Advisory Committee to which they are
appointed.

(c) MEETINGS.— Each Advisory
Committee shall meet at the call of the chair to consider an agenda set by
the chair.

(d) DUTIES.— Each Advisory
Committee shall—

(1) review the
policies, goals, performance, budget, and user fees of the United
States Patent and Trademark Office with respect to patents, in the
case of the Patent Public Advisory Committee, and with respect to
Trademarks, in the case of the Trademark Public Advisory Committee,
and advise the Director on these matters;

(2) within 60 days
after the end of each fiscal year—

(A) prepare an
annual report on the matters referred to in paragraph
(1);

(B) transmit the
report to the Secretary of Commerce, the President, and the
Committees on the Judiciary of the Senate and the House of
Representatives; and

(C) publish the
report in the Official Gazette of the United States Patent and
Trademark Office.

(e) COMPENSATION.— Each
member of each Advisory Committee shall be compensated for each day
(including travel time) during which such member is attending meetings or
conferences of that Advisory Committee or otherwise engaged in the business
of that Advisory Committee, at the rate which is the daily equivalent of the
annual rate of basic pay in effect for level III of the Executive Schedule
under section 5314 of title 5. While away from such member’s home or regular
place of business such member shall be allowed travel expenses, including
per diem in lieu of subsistence, as authorized by section 5703 of title
5.

(f) ACCESS TO INFORMATION.—
Members of each Advisory Committee shall be provided access to records and
information in the United States Patent and Trademark Office, except for
personnel or other privileged information and information concerning patent
applications required to be kept in confidence by
section
122
.

(g) APPLICABILITY OF CERTAIN
ETHICS LAWS.— Members of each Advisory Committee shall be special Government
employees within the meaning of section 202 of title 18.

(i) OPEN MEETINGS.— The
meetings of each Advisory Committee shall be open to the public, except that
each Advisory Committee may by majority vote meet in executive session when
considering personnel, privileged, or other confidential
information.

(j) INAPPLICABILITY OF
PATENT PROHIBITION.—
Section 4 shall not
apply to voting members of the Advisory Committees.

35 U.S.C. 6
Patent Trial and Appeal Board.

[Editor Note: Applicable to proceedings commenced on or after
September 16, 2012.* See
35 U.S.C. 6 (pre-AIA) for the
law otherwise applicable.]

(a) IN GENERAL.—There shall be in the
Office a Patent Trial and Appeal Board. The Director, the Deputy Director,
the Commissioner for Patents, the Commissioner for Trademarks, and the
administrative patent judges shall constitute the Patent Trial and Appeal
Board. The administrative patent judges shall be persons of competent legal
knowledge and scientific ability who are appointed by the Secretary, in
consultation with the Director. Any reference in any Federal law, Executive
order, rule, regulation, or delegation of authority, or any document of or
pertaining to the Board of Patent Appeals and Interferences is deemed to
refer to the Patent Trial and Appeal Board.

(b) DUTIES.—The Patent Trial and Appeal
Board shall—

(1) on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents pursuant to section
134(a);

(c) 3-MEMBER PANELS.—Each appeal,
derivation proceeding, post-grant review, and inter partes review shall be
heard by at least 3 members of the Patent Trial and Appeal Board, who shall
be designated by the Director. Only the Patent Trial and Appeal Board may
grant rehearings.

(d) TREATMENT OF PRIOR APPOINTMENTS.—The
Secretary of Commerce may, in the Secretary’s discretion, deem the
appointment of an administrative patent judge who, before the date of the
enactment of this subsection, held office pursuant to an appointment by the
Director to take effect on the date on which the Director initially
appointed the administrative patent judge. It shall be a defense to a
challenge to the appointment of an administrative patent judge on the basis
of the judge’s having been originally appointed by the Director that the
administrative patent judge so appointed was acting as a de facto
officer.

35 U.S.C. 6 (pre-AIA)
Board of Patent Appeals and Interferences.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012.* See
35 U.S.C. 6 for the law
otherwise applicable.]

(a) ESTABLISHMENT AND
COMPOSITION.— There shall be in the United States Patent and Trademark
Office a Board of Patent Appeals and Interferences. The Director, the Deputy
Director, the Commissioner for Patents, the Commissioner for Trademarks, and
the administrative patent judges shall constitute the Board. The
administrative patent judges shall be persons of competent legal knowledge
and scientific ability who are appointed by the Secretary of Commerce, in
consultation with the Director.

(b) DUTIES.— The Board of
Patent Appeals and Interferences shall, on written appeal of an applicant,
review adverse decisions of examiners upon applications for patents and
shall determine priority and patentability of invention in interferences
declared under
section 135(a). Each
appeal and interference shall be heard by at least three members of the
Board, who shall be designated by the Director. Only the Board of Patent
Appeals and Interferences may grant rehearings.

(c) AUTHORITY OF THE SECRETARY.— The
Secretary of Commerce may, in his or her discretion, deem the appointment of
an administrative patent judge who, before the date of the enactment of this
subsection, held office pursuant to an appointment by the Director to take
effect on the date on which the Director initially appointed the
administrative patent judge.

(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—
It shall be a defense to a challenge to the appointment of an administrative
patent judge on the basis of the judge's having been originally appointed by
the Director that the administrative patent judge so appointed was acting as
a de facto officer.

*NOTE: The provisions of this
section as in effect on Sept. 15, 2012 apply to interference proceedings that are
declared after September 15, 2012 under
35 U.S.C. 135 (pre-AIA). See
Public Law 112-274, sec. 1(k)(3), ___ Stat. ___ (Jan. 14, 2013).

35 U.S.C. 8
Classification of patents.

The Director may revise and
maintain the classification by subject matter of United States letters patent, and
such other patents and printed publications as may be necessary or practicable, for
the purpose of determining with readiness and accuracy the novelty of inventions for
which applications for patent are filed.

35 U.S.C. 9
Certified copies of records.

The Director may furnish
certified copies of specifications and drawings of patents issued by the Patent and
Trademark Office, and of other records available either to the public or to the
person applying therefor.

35 U.S.C. 10
Publications.

(a) The Director may publish
in printed, typewritten, or electronic form, the following:

(1) Patents and
published applications for patents, including specifications and
drawings, together with copies of the same. The Patent and Trademark
Office may print the headings of the drawings for patents for the
purpose of photolithography.

(2) Certificates of
trademark registrations, including statements and drawings, together
with copies of the same.

(3) The Official
Gazette of the United States Patent and Trademark
Office.

(4) Annual indexes of
patents and patentees, and of trademarks and
registrants.

(5) Annual volumes of
decisions in patent and trademark cases.

(6) Pamphlet copies of
the patent laws and rules of practice, laws and rules relating to
trademarks, and circulars or other publications relating to the
business of the Office.

(b) The Director may
exchange any of the publications specified in items 3, 4, 5, and 6 of
subsection (a) of this section for publications desirable for the use of the
Patent and Trademark Office.

35 U.S.C. 11
Exchange of copies of patents and applications with foreign
countries.

The Director may exchange copies
of specifications and drawings of United States patents and published applications
for patents for those of foreign countries. The Director shall not enter into an
agreement to provide such copies of specifications and drawings of United States
patents and applications to a foreign country, other than a NAFTA country or a WTO
member country, without the express authorization of the Secretary of Commerce. For
purposes of this section, the terms “NAFTA country” and “WTO member country” have the
meanings given those terms in
section 104(b).

35 U.S.C. 12
Copies of patents and applications for public
libraries.

The Director may supply copies of
specifications and drawings of patents and published applications for patents in
printed or electronic form to public libraries in the United States which shall
maintain such copies for the use of the public, at the rate for each year’s issue
established for this purpose in
section 41(d).

35 U.S.C. 13
Annual report to Congress.

The Director shall report to the
Congress, not later than 180 days after the end of each fiscal year, the moneys
received and expended by the Office, the purposes for which the moneys were spent,
the quality and quantity of the work of the Office, the nature of training provided
to examiners, the evaluation of the Commissioner of Patents and the Commissioner of
Trademarks by the Secretary of Commerce, the compensation of the Commissioners, and
other information relating to the Office.

35 U.S.C. 21
Filing date and day for taking action.

(a) The Director may by rule
prescribe that any paper or fee required to be filed in the Patent and
Trademark Office will be considered filed in the Office on the date on which
it was deposited with the United States Postal Service or would have been
deposited with the United States Postal Service but for postal service
interruptions or emergencies designated by the Director.

(b) When the day, or the
last day, for taking any action or paying any fee in the United States
Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia, the action may be taken, or fee paid, on
the next succeeding secular or business day.

35 U.S.C. 23
Testimony in Patent and Trademark Office cases.

The Director may establish rules
for taking affidavits and depositions required in cases in the Patent and Trademark
Office. Any officer authorized by law to take depositions to be used in the courts of
the United States, or of the State where he resides, may take such affidavits and
depositions.

35 U.S.C. 24
Subpoenas, witnesses.

The clerk of any United States
court for the district wherein testimony is to be taken for use in any contested case
in the Patent and Trademark Office, shall, upon the application of any party thereto,
issue a subpoena for any witness residing or being within such district, commanding
him to appear and testify before an officer in such district authorized to take
depositions and affidavits, at the time and place stated in the subpoena. The
provisions of the Federal Rules of Civil Procedure relating to the attendance of
witnesses and to the production of documents and things shall apply to contested
cases in the Patent and Trademark Office.

Every witness subpoenaed and in
attendance shall be allowed the fees and traveling expenses allowed to witnesses
attending the United States district courts.

A judge of a court whose clerk
issued a subpoena may enforce obedience to the process or punish disobedience as in
other like cases, on proof that a witness, served with such subpoena, neglected or
refused to appear or to testify. No witness shall be deemed guilty of contempt for
disobeying such subpoena unless his fees and traveling expenses in going to, and
returning from, and one day’s attendance at the place of examination, are paid or
tendered him at the time of the service of the subpoena; nor for refusing to disclose
any secret matter except upon appropriate order of the court which issued the
subpoena.

35 U.S.C. 25
Declaration in lieu of oath.

(a) The Director may by rule
prescribe that any document to be filed in the Patent and Trademark Office
and which is required by any law, rule, or other regulation to be under oath
may be subscribed to by a written declaration in such form as the Director
may prescribe, such declaration to be in lieu of the oath otherwise
required.

(b) Whenever such written
declaration is used, the document must warn the declarant that willful false
statements and the like are punishable by fine or imprisonment, or both
(18 U.S.C.
1001).

35 U.S.C. 26
Effect of defective execution.

Any document to be filed in the
Patent and Trademark Office and which is required by any law, rule, or other
regulation to be executed in a specified manner may be provisionally accepted by the
Director despite a defective execution, provided a properly executed document is
submitted within such time as may be prescribed.

35 U.S.C. 31
[Repealed].

35 U.S.C. 32
Suspension or exclusion from practice.

The Director may, after notice
and opportunity for a hearing, suspend or exclude, either generally or in any
particular case, from further practice before the Patent and Trademark Office, any
person, agent, or attorney shown to be incompetent or disreputable, or guilty of
gross misconduct, or who does not comply with the regulations established under
section
2(b)(2)(D), or who shall, by word, circular, letter, or
advertising, with intent to defraud in any manner, deceive, mislead, or threaten any
applicant or prospective applicant, or other person having immediate or prospective
business before the Office. The reasons for any such suspension or exclusion shall be
duly recorded. The Director shall have the discretion to designate any attorney who
is an officer or employee of the United States Patent and Trademark Office to conduct
the hearing required by this section. A proceeding under this section shall be
commenced not later than the earlier of either the date that is 10 years after the
date on which the misconduct forming the basis for the proceeding occurred, or 1 year
after the date on which the misconduct forming the basis for the proceeding is made
known to an officer or employee of the Office as prescribed in the regulations
established under section
2(b)(2)(D). The United States
District Court for the Eastern District of Virginia, under such conditions and upon
such proceedings as it by its rules determines, may review the action of the Director
upon the petition of the person so refused recognition or so suspended or
excluded.

35 U.S.C. 33
Unauthorized representation as practitioner.

Whoever, not being recognized to
practice before the Patent and Trademark Office, holds himself out or permits himself
to be held out as so recognized, or as being qualified to prepare or prosecute
applications for patent, shall be fined not more than $1,000 for each
offense.

35 U.S.C. 41
Patent fees; patent and trademark search
systems.

(A) On filing
each application for an original patent, except for design,
plant, or provisional applications, $330.

(B) On filing
each application for an original design patent,
$220.

(C) On filing
each application for an original plant patent,
$220.

(D) On filing
each provisional application for an original patent,
$220.

(E) On filing
each application for the reissue of a patent,
$330.

(F) The basic
national fee for each international application filed under the
treaty defined in section
351(a)
entering the national stage under section
371,
$330.

(G) In addition,
excluding any sequence listing or computer program listing filed
in electronic medium as prescribed by the Director, for any
application the specification and drawings of which exceed 100
sheets of paper (or equivalent as prescribed by the Director if
filed in an electronic medium), $270 for each additional 50
sheets of paper (or equivalent as prescribed by the Director if
filed in an electronic medium) or fraction
thereof.

(2) EXCESS CLAIMS
FEES. —

(A) IN GENERAL.
— In addition to the fee specified in paragraph (1) —

(i) on filing or on
presentation at any other time, $220 for each claim in
independent form in excess of 3;

(ii) on filing or on
presentation at any other time, $52 for each claim
(whether dependent or independent) in excess of 20;
and

(iii) for each
application containing a multiple dependent claim,
$390.

(B) MULTIPLE
DEPENDENT CLAIMS.— For the purpose of computing fees under
subparagraph (A), a multiple dependent claim referred to in
section
112 or any
claim depending therefrom shall be considered as separate
dependent claims in accordance with the number of claims to
which reference is made.

(C) REFUNDS;
ERRORS IN PAYMENT.— The Director may by regulation provide for a
refund of any part of the fee specified in subparagraph (A) for
any claim that is canceled before an examination on the merits,
as prescribed by the Director, has been made of the application
under section
131
. Errors in payment of the additional
fees under this paragraph may be rectified in accordance with
regulations prescribed by the Director.

(3) EXAMINATION FEES.
—

(A) IN
GENERAL.—

(i) For examination of each application for an
original patent, except for design, plant, provisional, or
international applications, $220.

(ii) For examination of
each application for an original design patent,
$140.

(iii) For examination of
each application for an original plant patent,
$170.

(iv) For examination of
the national stage of each international application,
$220.

(v) For examination of
each application for the reissue of a patent,
$650.

(B)
APPLICABILITY OF OTHER FEE PROVISIONS.— The provisions of
paragraphs (3) and (4) of section
111(a)
relating to the payment of the fee for filing the application
shall apply to the payment of the fee specified in subparagraph
(A) with respect to an application filed under
section
111(a). The
provisions of section
371
(d) relating to the payment of the
national fee shall apply to the payment of the fee specified
subparagraph (A) with respect to an international
application.

(4) ISSUE FEES. —

(A) For issuing
each original patent, except for design or plant patents,
$1,510.

(B) For issuing
each original design patent, $860.

(C) For issuing
each original plant patent, $1,190.

(D) For issuing
each reissue patent, $1,510.

(5) DISCLAIMER FEE. —
On filing each disclaimer, $140.

(6) APPEAL FEES.
—

(A) On filing an
appeal from the examiner to the Patent Trial and Appeal Board,
$540.

(B) In addition,
on filing a brief in support of the appeal, $540, and on
requesting an oral hearing in the appeal before the Patent Trial
and Appeal Board, $1,080.

(7) REVIVAL FEES. — On
filing each petition for the revival of an unintentionally abandoned
application for a patent, for the unintentionally delayed payment of
the fee for issuing each patent, or for an unintentionally delayed
response by the patent owner in any reexamination proceeding, $1,620,
unless the petition is filed under section
133
or
151
, in which case the fee shall be
$540.

(8) EXTENSION FEES. —
For petitions for 1-month extensions of time to take actions required
by the Director in an application —

(A) on filing a
first petition, $130;

(B) on filing a
second petition, $360; and

(C) on filing a
third or subsequent petition, $620.

(b) MAINTENANCE FEES. —

(1) IN GENERAL.— The Director shall charge the following fees
for maintaining in force all patents based on applications filed on or
after December 12, 1980:

(A) Three years and 6 months
after grant, $980.

(B) Seven years and 6 months
after grant, $2,480.

(C) Eleven years and 6 months
after grant, $4,110.

(2) GRACE PERIOD; SURCHARGE.— Unless payment of the
applicable maintenance fee under paragraph (1) is received in the
Office on or before the date the fee is due or within a grace period
of 6 months thereafter, the patent shall expire as of the end of such
grace period. The Director may require the payment of a surcharge as a
condition of accepting within such 6-month grace period the payment of
an applicable maintenance fee.

(3) NO MAINTENANCE FEE FOR DESIGN OR PLANT PATENT.— No fee
may be established for maintaining a design or plant patent in
force.

(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.—

(1) ACCEPTANCE.—The
Director may accept the payment of any maintenance fee required by
subsection (b) of this section which is made within twenty-four months
after the six-month grace period if the delay is shown to the
satisfaction of the Director to have been unintentional, or at any
time after the six-month grace period if the delay is shown to the
satisfaction of the Director to have been unavoidable. The Director
may require the payment of a surcharge as a condition of accepting
payment of any maintenance fee after the six-month grace period. If
the Director accepts payment of a maintenance fee after the six-month
grace period, the patent shall be considered as not having expired at
the end of the grace period.

(2) EFFECT ON RIGHTS
OF OTHERS.— A patent, the term of which has been maintained as a
result of the acceptance of a payment of a maintenance fee under this
subsection, shall not abridge or affect the right of any person or
that person’s successors in business who made, purchased, offered to
sell, or used anything protected by the patent within the United
States, or imported anything protected by the patent into the United
States after the 6-month grace period but prior to the acceptance of a
maintenance fee under this subsection, to continue the use of, to
offer for sale, or to sell to others to be used, offered for sale, or
sold, the specific thing so made, purchased, offered for sale, used,
or imported. The court before which such matter is in question may
provide for the continued manufacture, use, offer for sale, or sale of
the thing made, purchased, offered for sale, or used within the United
States, or imported into the United States, as specified, or for the
manufacture, use, offer for sale, or sale in the United States of
which substantial preparation was made after the 6-month grace period
but before the acceptance of a maintenance fee under this subsection,
and the court may also provide for the continued practice of any
process that is practiced, or for the practice of which substantial
preparation was made, after the 6-month grace period but before the
acceptance of a maintenance fee under this subsection, to the extent
and under such terms as the court deems equitable for the protection
of investments made or business commenced after the 6-month grace
period but before the acceptance of a maintenance fee under this
subsection.

(d) PATENT SEARCH AND OTHER
FEES. —

(1) PATENT SEARCH
FEES. —

(A) IN
GENERAL.— The Director shall charge the fees specified under
subparagraph (B) for the search of each application for a
patent, except for provisional applications. The Director shall
adjust the fees charged under this paragraph to ensure that the
fees recover an amount not to exceed the estimated average cost
to the Office of searching applications for patent by Office
personnel.

(B) SPECIFIC
FEES.—The fees referred to in subparagraph (A) are—

(i) $540
for each application for an original patent, except for
design, plant, provisional, or international
applications;

(ii) $100
for each application for an original design
patent;

(iii) $330
for each application for an original plant
patent;

(iv) $540
for the national stage of each international application;
and

(v) $540
for each application for the reissue of a
patent.

(C)
APPLICABILITY OF OTHER PROVISIONS.— The provisions of paragraphs
(3) and (4) of section
111
(a) relating to the payment of the fee
for filing the application shall apply to the payment of the fee
specified in this paragraph with respect to an application filed
under section
111(a). The provisions of
section
371(d)
relating to the payment of the national fee shall apply to the
payment of the fee specified in this paragraph with respect to
an international application.

(D) REFUNDS.—
The Director may by regulation provide for a refund of any part
of the fee specified in this paragraph for any applicant who
files a written declaration of express abandonment as prescribed
by the Director before an examination has been made of the
application under section
131
.

(2) OTHER FEES.—

(A) IN
GENERAL.— The Director shall establish fees for all other
processing, services, or materials relating to patents not
specified in this section to recover the estimated average cost
to the Office of such processing, services, or materials, except
that the Director shall charge the following fees for the
following services:

(i) For recording a
document affecting title, $40 per
property.

(ii) For each photocopy,
$.25 per page.

(iii) For each black and
white copy of a patent, $3.

(B) COPIES FOR
LIBRARIES.—The yearly fee for providing a library specified in
section
12 with
uncertified printed copies of the specifications and drawings
for all patents in that year shall be $50.

(e) WAIVER OF FEES; COPIES
REGARDING NOTICE.— The Director may waive the payment of any fee for any
service or material related to patents in connection with an occasional or
incidental request made by a department or agency of the Government, or any
officer thereof. The Director may provide any applicant issued a notice
under
section 132 with a copy
of the specifications and drawings for all patents referred to in that
notice without charge.

(f) ADJUSTMENT OF FEES.—
The fees established in subsections (a) and (b) of this section may be
adjusted by the Director on October 1, 1992, and every year thereafter, to
reflect any fluctuations occurring during the previous 12 months in the
Consumer Price Index, as determined by the Secretary of Labor. Changes of
less than 1 per centum may be ignored.

(g) [Repealed]

(h) FEES FOR SMALL ENTITIES.—

(1) REDUCTIONS IN
FEES.— Subject to paragraph (3), fees charged under subsections (a),
(b) and (d)(1) shall be reduced by 50 percent with respect to their
application to any small business concern as defined under section 3
of the Small Business Act, and to any independent inventor or
nonprofit organization as defined in regulations issued by the
Director.

(2) SURCHARGES AND
OTHER FEES.— With respect to its application to any entity described
in paragraph (1), any surcharge or fee charged under subsection (c) or
(d) shall not be higher than the surcharge or fee required of any
other entity under the same or substantially similar circumstances.

(3) REDUCTION FOR
ELECTRONIC FILING.— The fee charged under subsection (a)(l)(A) shall
be reduced by 75 percent with respect to its application to any entity
to which paragraph (1) applies, if the application is filed by
electronic means as prescribed by the Director.

(i) ELECTRONIC PATENT AND TRADEMARK
DATA.—

(1) MAINTENANCE OF
COLLECTIONS.— The Director shall maintain, for use by the public,
paper, microform or electronic collections of United States patents,
foreign patent documents, and United States trademark registrations
arranged to permit search for and retrieval of information. The
Director may not impose fees directly for the use of such collections,
or for the use of the public patent and trademark search rooms or
libraries.

(2) AVAILABILITY OF
AUTOMATED SEARCH SYSTEMS.— The Director shall provide for the full
deployment of the automated search systems of the Patent and Trademark
Office so that such systems are available for use by the public, and
shall assure full access by the public to, and dissemination of,
patent and trademark information, using a variety of automated
methods, including electronic bulletin boards and remote access by
users to mass storage and retrieval systems.

(3) ACCESS FEES.— The
Director may establish reasonable fees for access by the public to the
automated search systems of the Patent and Trademark Office. If such
fees are established, a limited amount of free access shall be made
available to users of the systems for purposes of education and
training. The Director may waive the payment by an individual of fees
authorized by this subsection upon a showing of need or hardship, and
if such waiver is in the public interest.

(4) ANNUAL REPORT TO
CONGRESS.— The Director shall submit to the Congress an annual report
on the automated search systems of the Patent and Trademark Office and
the access by the public to such systems. The Director shall also
publish such report in the Federal Register. The Director shall
provide an opportunity for the submission of comments by interested
persons on each such report.

35 U.S.C. 42
Patent and Trademark Office funding.

(a) All fees for services
performed by or materials furnished by the Patent and Trademark Office will
be payable to the Director.

(b) All fees paid to the
Director and all appropriations for defraying the costs of the activities of
the Patent and Trademark Office will be credited to the Patent and Trademark
Office Appropriation Account in the Treasury of the United
States.

(c)

(1) To the extent and in the amounts
provided in advance in appropriations Acts, fees authorized in this
title or any other Act to be charged or established by the Director
shall be collected by and shall, subject to paragraph (3), be
available to the Director to carry out the activities of the Patent
and Trademark Office.

(2) There is established in the
Treasury a Patent and Trademark Fee Reserve Fund. If fee collections
by the Patent and Trademark Office for a fiscal year exceed the amount
appropriated to the Office for that fiscal year, fees collected in
excess of the appropriated amount shall be deposited in the Patent and
Trademark Fee Reserve Fund. To the extent and in the amounts provided
in appropriations Acts, amounts in the Fund shall be made available
until expended only for obligation and expenditure by the Office in
accordance with paragraph (3).

(3)

(A) Any fees that are
collected under this title, and any surcharges on such fees, may
only be used for expenses of the Office relating to the
processing of patent applications and for other activities,
services, and materials relating to patents and to cover a
proportionate share of the administrative costs of the
Office.

(B) Any fees that are
collected under section 31 of the Trademark Act of 1946, and any
surcharges on such fees, may only be used for expenses of the
Office relating to the processing of trademark registrations and
for other activities, services, and materials relating to
trademarks and to cover a proportionate share of the
administrative costs of the Office.

(d) The Director may refund
any fee paid by mistake or any amount paid in excess of that
required.

(e) The Secretary of
Commerce shall, on the day each year on which the President submits the
annual budget to the Congress, provide to the Committees on the Judiciary of
the Senate and the House of Representatives:

(1) a list of patent
and trademark fee collections by the Patent and Trademark Office
during the preceding fiscal year;

(2) a list of
activities of the Patent and Trademark Office during the preceding
fiscal year which were supported by patent fee expenditures, trademark
fee expenditures, and appropriations;

(3) budget plans for
significant programs, projects, and activities of the Office,
including out-year funding estimates;

35 U.S.C. 100 (note)
AIA First inventor to file provisions.

The first inventor to file provisions of the
Leahy-Smith America Invents Act (AIA) apply to any application for patent, and to any
patent issuing thereon, that contains or contained at any time—

(A) a claim to a claimed invention
that has an effective filing date on or after March 16, 2013 wherein the
effective filing date is:

(i) if subparagraph (ii) does not apply, the actual filing
date of the patent or the application for the patent containing a
claim to the invention; or

(ii) the filing date of the earliest application for which the
patent or application is entitled, as to such invention, to a right of
priority under section
119,
365(a), or
365(b) or to the
benefit of an earlier filing date under section
120
,
121, or
365(c); or

(B) a specific reference under section
120 ,
121, or
365(c) of title 35, United
States Code, to any patent or application that contains or contained at any
time such a claim.

35 U.S.C. 100
Definitions.

[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to
patent
applications
and patents subject to the first inventor to file provisions of
the AIA (
35 U.S.C. 100 (note)). See
35 U.S.C.
100(e) (pre-AIA)
for
subsection
(e) as otherwise applicable.]

When used in this title unless the context otherwise indicates
-

(a) The term “invention”
means invention or discovery.

(b) The term “process” means
process, art, or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material.

(c) The terms “United
States” and “this country” mean the United States of America, its
territories and possessions.

(d) The word “patentee”
includes not only the patentee to whom the patent was issued but also the
successors in title to the patentee.

(e) The term “third-party requester” means a
person requesting ex parte reexamination under
section 302 who is not the
patent owner.

(f) The term "inventor" means the individual or, if a joint
invention, the individuals collectively who invented or discovered the
subject matter of the invention.

(g) The terms "joint inventor" and
"coinventor" mean any 1 of the individuals who invented or discovered the
subject matter of a joint invention.

(h) The term "joint research agreement"
means a written contract, grant, or cooperative agreement entered into by 2
or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed
invention.

(i)

(1) The term "effective filing
date" for a claimed invention in a patent or application for patent
means—

(A) if subparagraph (B) does
not apply, the actual filing date of the patent or the
application for the patent containing a claim to the invention;
or

(B) the filing date of the
earliest application for which the patent or application is
entitled, as to such invention, to a right of priority under
section
119,
365(a), or
365(b) or to
the benefit of an earlier filing date under section
120,
121, or
365(c).

(2) The effective filing date for a
claimed invention in an application for reissue or reissued patent
shall be determined by deeming the claim to the invention to have been
contained in the patent for which reissue was sought.

(j) The term "claimed invention" means
the subject matter defined by a claim in a patent or an application for a
patent.

35 U.S.C. 100 (pre-AIA)
Definitions.

[Editor Note: Pre-AIA 35 U.S.C.
100(e) as set forth below is
is not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
). See
35 U.S.C. 100(e)-(j)
for the law otherwise applicable.]

When used in this title unless
the context otherwise indicates -

*****

(e) The term “third-party
requester” means a person requesting ex parte reexamination under
section 302 or inter
partes reexamination under
section
311
who is not the patent owner.

35 U.S.C. 101
Inventions patentable.

Whoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.

(1) the claimed invention was
patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing
date of the claimed invention; or

(2) the claimed invention was
described in a patent issued under section
151, or in an application for patent published
or deemed published under section
122(b), in which
the patent or application, as the case may be, names another inventor
and was effectively filed before the effective filing date of the
claimed invention.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS
BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A
disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention
under subsection (a)(1) if—

(A) the disclosure was made
by the inventor or joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or

(B) the subject matter
disclosed had, before such disclosure, been publicly disclosed
by the inventor or a joint inventor or another who obtained the
subject matter disclosed directly or indirectly from the
inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN
APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a
claimed invention under subsection (a)(2) if—

(A) the subject matter
disclosed was obtained directly or indirectly from the inventor
or a joint inventor;

(B) the subject matter
disclosed had, before such subject matter was effectively filed
under subsection (a)(2), been publicly disclosed by the inventor
or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor; or

(C) the subject matter
disclosed and the claimed invention, not later than the
effective filing date of the claimed invention, were owned by
the same person or subject to an obligation of assignment to the
same person.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH
AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed
to have been owned by the same person or subject to an obligation of
assignment to the same person in applying the provisions of subsection
(b)(2)(C) if—

(1) the subject matter disclosed
was developed and the claimed invention was made by, or on behalf of,
1 or more parties to a joint research agreement that was in effect on
or before the effective filing date of the claimed
invention;

(2) the claimed invention was made
as a result of activities undertaken within the scope of the joint
research agreement; and

(3) the application for patent for
the claimed invention discloses or is amended to disclose the names of
the parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS
EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or
application for patent is prior art to a claimed invention under subsection
(a)(2), such patent or application shall be considered to have been
effectively filed, with respect to any subject matter described in the
patent or application—

(1) if paragraph (2) does not
apply, as of the actual filing date of the patent or the application
for patent; or

(2) if the patent or application
for patent is entitled to claim a right of priority under section
119,
365(a), or
365(b) or to claim the benefit of an earlier
filing date under section
120,
121, or
365(c), based upon
1 or more prior filed applications for patent, as of the filing date
of the earliest such application that describes the subject
matter.

*NOTE: The provisions of
35 U.S.C.
102(g)
, as in effect on
March 15,
2013,
shall also apply to each claim of an application for
patent, and any patent issued thereon, for which the first inventor to file
provisions of the AIA apply (see
35 U.S.C. 100 (note)), if such
application or patent contains or contained at any time a claim to a claimed
invention to which is
not subject to the first
inventor to file provisions of the AIA.]

35 U.S.C. 102 (pre-AIA)
Conditions for patentability; novelty and loss of right to
patent.

[Editor Note: With the exception of subsection (g)*),
not
applicable
to any patent application subject to the first inventor to
file provisions of the AIA (see
35 U.S.C. 100 (note)). See
35
U.S.C. 102
for the law otherwise
applicable.]

A person shall be entitled to a
patent unless —

(a) the invention was known
or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by
the applicant for patent, or

(b) the invention was
patented or described in a printed publication in this or a foreign country
or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States, or

(c) he has abandoned the
invention, or

(d) the invention was first
patented or caused to be patented, or was the subject of an inventor’s
certificate, by the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent in this
country on an application for patent or inventor’s certificate filed more
than twelve months before the filing of the application in the United
States, or

(e) the invention was
described in — (1) an application for patent, published under
section 122(b), by
another filed in the United States before the invention by the applicant for
patent or (2) a patent granted on an application for patent by another filed
in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in
section 351(a) shall
have the effects for the purposes of this subsection of an application filed
in the United States only if the international application designated the
United States and was published under
Article
21(2)
of such treaty in the English language;
or

(f) he did not himself
invent the subject matter sought to be patented, or

(g)

(1) during the course
of an interference conducted under
section
135
or
section
291
, another inventor involved therein
establishes, to the extent permitted in
section 104, that before such person’s
invention thereof the invention was made by such other inventor and
not abandoned, suppressed, or concealed, or

(2) before such person’s invention thereof, the invention was
made in this country by another inventor who had not abandoned,
suppressed, or concealed it. In determining priority of invention
under this subsection, there shall be considered not only the
respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to
conception by the other.

*NOTE: The provisions of
35 U.S.C.
102(g)
, as in effect on
March 15,
2013,
shall apply to each claim of an application for
patent, and any patent issued thereon, for which the first inventor to file
provisions of the AIA apply (see
35 U.S.C. 100 (note), if such
application or patent contains or contained at any time—

(A) a claim to an invention having
an effective filing date as defined in section
100(i) of title 35, United States Code, that
occurs before March 16, 2013; or

(B) a specific reference under
section
120 ,
121, or
365(c) of title
35, United States Code, to any patent or application that contains or
contained at any time such a claim.

A patent for a claimed invention may not be obtained, notwithstanding
that the claimed invention is not identically disclosed as set forth in section
102, if the differences between the claimed invention and the
prior art are such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person having ordinary
skill in the art to which the claimed invention pertains. Patentability shall not be
negated by the manner in which the invention was made.

[Editor Note:
Not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
). See
35 U.S.C.
103
for the law otherwise
applicable.]

(a) A patent may not be
obtained though the invention is not identically disclosed or described as
set forth in
section 102 , if the
differences between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.

(b)

(1) Notwithstanding
subsection (a), and upon timely election by the applicant for patent
to proceed under this subsection, a biotechnological process using or
resulting in a composition of matter that is novel under
section 102 and
nonobvious under subsection (a) of this section shall be considered
nonobvious if-

(A) claims to
the process and the composition of matter are contained in
either the same application for patent or in separate
applications having the same effective filing date;
and

(B) the
composition of matter, and the process at the time it was
invented, were owned by the same person or subject to an
obligation of assignment to the same person.

(2) A patent issued on
a process under paragraph (1)-

(A) shall also
contain the claims to the composition of matter used in or made
by that process, or

(B) shall, if
such composition of matter is claimed in another patent, be set
to expire on the same date as such other patent, notwithstanding
section
154
.

(3) For purposes of
paragraph (1), the term “biotechnological process”
means-

(A) a process of
genetically altering or otherwise inducing a single- or
multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an
endogenous nucleotide sequence, or

(iii) express a specific physiological characteristic not
naturally associated with said organism;

(B) cell fusion
procedures yielding a cell line that expresses a specific
protein, such as a monoclonal antibody; and

(C) a method of
using a product produced by a process defined by subparagraph
(A) or (B), or a combination of subparagraphs (A) and
(B).

(c)

(1) Subject matter
developed by another person, which qualifies as prior art only under
one or more of subsections (e), (f), and (g) of
section 102
, shall not preclude patentability
under this section where the subject matter and the claimed invention
were, at the time the claimed invention was made, owned by the same
person or subject to an obligation of assignment to the same
person.

(2) For purposes of
this subsection, subject matter developed by another person and a
claimed invention shall be deemed to have been owned by the same
person or subject to an obligation of assignment to the same person if
—

(A) the claimed
invention was made by or on behalf of parties to a joint
research agreement that was in effect on or before the date the
claimed invention was made;

(B) the claimed
invention was made as a result of activities undertaken within
the scope of the joint research agreement; and

(C) the
application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint
research agreement.

(3) For purposes of
paragraph (2), the term “joint research agreement” means a written
contract, grant, or cooperative agreement entered into by two or more
persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed
invention.

35 U.S.C. 104
[Repealed.]

35 U.S.C. 104 (pre-AIA)
Invention made abroad.

[Editor Note:
Not applicable to any patent application subject
to the first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). 35 U.S.C. 104 repealed with regard to such
applications).]

(a) IN
GENERAL.—

(1) PROCEEDINGS.—In
proceedings in the Patent and Trademark Office, in the courts, and
before any other competent authority, an applicant for a patent, or a
patentee, may not establish a date of invention by reference to
knowledge or use thereof, or other activity with respect thereto, in a
foreign country other than a NAFTA country or a WTO member country,
except as provided in
sections
119
and
365.

(2) RIGHTS.—If an
invention was made by a person, civil or military—

(A) while
domiciled in the United States, and serving in any other country
in connection with operations by or on behalf of the United
States,

(B) while
domiciled in a NAFTA country and serving in another country in
connection with operations by or on behalf of that NAFTA
country, or

(C) while
domiciled in a WTO member country and serving in another country
in connection with operations by or on behalf of that WTO member
country, that person shall be entitled to the same rights of
priority in the United States with respect to such invention as
if such invention had been made in the United States, that NAFTA
country, or that WTO member country, as the case may
be.

(3) USE OF
INFORMATION.—To the extent that any information in a NAFTA country or
a WTO member country concerning knowledge, use, or other activity
relevant to proving or disproving a date of invention has not been
made available for use in a proceeding in the Patent and Trademark
Office, a court, or any other competent authority to the same extent
as such information could be made available in the United States, the
Director, court, or such other authority shall draw appropriate
inferences, or take other action permitted by statute, rule, or
regulation, in favor of the party that requested the information in
the proceeding.

(b) DEFINITIONS.—As used in
this section—

(1) The term “NAFTA
country” has the meaning given that term in section 2(4) of the North
American Free Trade Agreement Implementation Act; and

(2) The term “WTO
member country” has the meaning given that term in section 2(10) of
the Uruguay Round Agreements Act.

35 U.S.C. 105
Inventions in outer space.

(a) Any invention made,
used, or sold in outer space on a space object or component thereof under
the jurisdiction or control of the United States shall be considered to be
made, used or sold within the United States for the purposes of this title,
except with respect to any space object or component thereof that is
specifically identified and otherwise provided for by an international
agreement to which the United States is a party, or with respect to any
space object or component thereof that is carried on the registry of a
foreign state in accordance with the Convention on Registration of Objects
Launched into Outer Space.

(b) Any invention made,
used, or sold in outer space on a space object or component thereof that is
carried on the registry of a foreign state in accordance with the Convention
on Registration of Objects Launched into Outer Space, shall be considered to
be made, used, or sold within the United States for the purposes of this
title if specifically so agreed in an international agreement between the
United States and the state of registry.

(3) FEE AND OATH OR
DECLARATION.—The application must be accompanied by the fee required
by law. The fee and oath or declaration may be submitted after the
specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a
surcharge, as may be prescribed by the Director.

(4) FAILURE TO
SUBMIT.—Upon failure to submit the fee and oath or declaration within
such prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the Director that
the delay in submitting the fee and oath or declaration was
unavoidable or unintentional. The filing date of an application shall
be the date on which the specification and any required drawing are
received in the Patent and Trademark Office.

(b) PROVISIONAL
APPLICATION.—

(1) AUTHORIZATION.—A provisional application for patent shall be made or
authorized to be made by the inventor, except as otherwise provided in
this title, in writing to the Director. Such application shall
include—

(2) CLAIM.—A claim,
as required by subsections (b) through (e) of
section
112
, shall not be required in a provisional
application.

(3) FEE.—

(A) The
application must be accompanied by the fee required by
law.

(B) The fee
may be submitted after the specification and any required
drawing are submitted, within such period and under such
conditions, including the payment of a surcharge, as may be
prescribed by the Director.

(C) Upon
failure to submit the fee within such prescribed period, the
application shall be regarded as abandoned, unless it is shown
to the satisfaction of the Director that the delay in submitting
the fee was unavoidable or unintentional.

(4) FILING
DATE.—The filing date of a provisional application shall be the date
on which the specification and any required drawing are received in
the Patent and Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely
request and as prescribed by the Director, a provisional application
may be treated as an application filed under subsection (a). Subject
to section
119(e)(3), if no
such request is made, the provisional application shall be regarded as
abandoned 12 months after the filing date of such application and
shall not be subject to revival after such 12-month
period.

(6) OTHER BASIS FOR
PROVISIONAL APPLICATION.—Subject to all the conditions in this
subsection and
section 119(e) of
this title, and as prescribed by the Director, an application for
patent filed under subsection (a) may be treated as a provisional
application for patent.

(7) NO RIGHT OF
PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application
shall not be entitled to the right of priority of any other
application under
section 119 or
365(a) or to the benefit of an earlier filing
date in the United States under
section 120,
121, or
365(c).

(8) APPLICABLE
PROVISIONS.—The provisions of this title relating to applications for
patent shall apply to provisional applications for patent, except as
otherwise provided, and except that provisional applications for
patent shall not be subject to
sections 131 and
135.

(C) an oath by
the applicant as prescribed by
section 115
of this title.

(3) FEE AND OATH.—The
application must be accompanied by the fee required by law. The fee
and oath may be submitted after the specification and any required
drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Director.

(4) FAILURE TO
SUBMIT.—Upon failure to submit the fee and oath within such prescribed
period, the application shall be regarded as abandoned, unless it is
shown to the satisfaction of the Director that the delay in submitting
the fee and oath was unavoidable or unintentional. The filing date of
an application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark
Office.

(b) PROVISIONAL
APPLICATION.—

(1) AUTHORIZATION.—A
provisional application for patent shall be made or authorized to be
made by the inventor, except as otherwise provided in this title, in
writing to the Director. Such application shall
include—

(A) a
specification as prescribed by the first paragraph of
section 112
of this title; and

(2) CLAIM.—A claim, as
required by the second through fifth paragraphs of
section 112, shall not be required in a
provisional application.

(3) FEE.—

(A) The
application must be accompanied by the fee required by
law.

(B) The fee may
be submitted after the specification and any required drawing
are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by
the Director.

(C) Upon failure
to submit the fee within such prescribed period, the application
shall be regarded as abandoned, unless it is shown to the
satisfaction of the Director that the delay in submitting the
fee was unavoidable or unintentional.

(4) FILING DATE.—The
filing date of a provisional application shall be the date on which
the specification and any required drawing are received in the Patent
and Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely
request and as prescribed by the Director, a provisional application
may be treated as an application filed under subsection (a). Subject
to
section 119(e)(3) of this title,
if no such request is made, the provisional application shall be
regarded as abandoned 12 months after the filing date of such
application and shall not be subject to revival after such 12-month
period.

(6) OTHER BASIS FOR
PROVISIONAL APPLICATION.—Subject to all the conditions in this
subsection and
section 119(e) of
this title, and as prescribed by the Director, an application for
patent filed under subsection (a) may be treated as a provisional
application for patent.

(7) NO RIGHT OF
PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application
shall not be entitled to the right of priority of any other
application under
section 119 or
365(a) of this
title or to the benefit of an earlier filing date in the United States
under
section 120,
121, or
365(c) of this
title.

(8) APPLICABLE
PROVISIONS.—The provisions of this title relating to applications for
patent shall apply to provisional applications for patent, except as
otherwise provided, and except that provisional applications for
patent shall not be subject to
sections 115,
131,
135, and
157 of this title.

35 U.S.C. 112
Specification.

[Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See
35 U.S.C. 112 (pre-AIA) for
the law otherwise applicable.]

(a) IN GENERAL.—The specification shall
contain a written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor or joint inventor of
carrying out the invention.

(b) CONCLUSION.—The specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards
as the invention.

(c) FORM.—A claim may be written in
independent or, if the nature of the case admits, in dependent or multiple
dependent form.

(d) REFERENCE IN DEPENDENT FORMS.—Subject
to subsection (e), a claim in dependent form shall contain a reference to a
claim previously set forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it
refers.

(e) REFERENCE IN MULTIPLE DEPENDENT
FORM.—A claim in multiple dependent form shall contain a reference, in the
alternative only, to more than one claim previously set forth and then
specify a further limitation of the subject matter claimed. A multiple
dependent claim shall not serve as a basis for any other multiple dependent
claim. A multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in relation to which
it is being considered.

(f) ELEMENT IN CLAIM FOR A
COMBINATION.—An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described
in the specification and equivalents thereof.

35 U.S.C. 112 (pre-AIA)
Specification.

[Editor Note:
Not applicable to any patent
application filed on or after September 16, 2012. See
35 U.S.C.
112
for the law otherwise
applicable.]

The specification shall contain a
written description of the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.

The specification shall conclude
with one or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.

A claim may be written in
independent or, if the nature of the case admits, in dependent or multiple dependent
form.

Subject to the following
paragraph, a claim in dependent form shall contain a reference to a claim previously
set forth and then specify a further limitation of the subject matter claimed. A
claim in dependent form shall be construed to incorporate by reference all the
limitations of the claim to which it refers.

A claim in multiple dependent
form shall contain a reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation of the subject matter
claimed. A multiple dependent claim shall not serve as a basis for any other multiple
dependent claim. A multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in relation to which it is
being considered.

An element in a claim for a
combination may be expressed as a means or step for performing a specified function
without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.

35 U.S.C. 113
Drawings.

The applicant shall furnish a
drawing where necessary for the understanding of the subject matter sought to be
patented. When the nature of such subject matter admits of illustration by a drawing
and the applicant has not furnished such a drawing, the Director may require its
submission within a time period of not less than two months from the sending of a
notice thereof. Drawings submitted after the filing date of the application may not
be used (i) to overcome any insufficiency of the specification due to lack of an
enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement
the original disclosure thereof for the purpose of interpretation of the scope of any
claim.

35 U.S.C. 115
Inventor’s oath or declaration.

[Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See
35 U.S.C. 115 (pre-AIA) for
the law otherwise applicable.]

(a) NAMING THE INVENTOR; INVENTOR’S OATH
OR DECLARATION.—An application for patent that is filed under section
111(a) or commences the national stage under section
371 shall include, or be amended to include, the name
of the inventor for any invention claimed in the application. Except as
otherwise provided in this section, each individual who is the inventor or a
joint inventor of a claimed invention in an application for patent shall
execute an oath or declaration in connection with the application.

(1) the application was made or was
authorized to be made by the affiant or declarant; and

(2) such individual believes
himself or herself to be the original inventor or an original joint
inventor of a claimed invention in the application.

(c) ADDITIONAL REQUIREMENTS.—The Director
may specify additional information relating to the inventor and the
invention that is required to be included in an oath or declaration under
subsection (a).

(d) SUBSTITUTE STATEMENT.—

(1) IN GENERAL.—In lieu of executing
an oath or declaration under subsection (a), the applicant for patent
may provide a substitute statement under the circumstances described
in paragraph (2) and such additional circumstances that the Director
may specify by regulation.

(2) PERMITTED CIRCUMSTANCES.—A
substitute statement under paragraph (1) is permitted with respect to
any individual who—

(A) is unable to file the oath
or declaration under subsection (a) because the individual—

(i) is
deceased;

(ii) is under legal
incapacity; or

(iii) cannot be found or
reached after diligent effort; or

(B) is under an obligation to
assign the invention but has refused to make the oath or
declaration required under subsection (a).

(3) CONTENTS.—A substitute statement
under this subsection shall—

(A) identify the individual
with respect to whom the statement applies;

(B) set forth the
circumstances representing the permitted basis for the filing of
the substitute statement in lieu of the oath or declaration
under subsection (a); and

(C) contain any additional
information, including any showing, required by the
Director.

(e) MAKING REQUIRED STATEMENTS IN
ASSIGNMENT OF RECORD.—An individual who is under an obligation of assignment
of an application for patent may include the required statements under
subsections (b) and (c) in the assignment executed by the individual, in
lieu of filing such statements separately.

(f) TIME FOR FILING.—The applicant for
patent shall provide each required oath or declaration under subsection (a),
substitute statement under subsection (d), or recorded assignment meeting
the requirements of subsection (e) no later than the date on which the issue
fee is paid.

(1) EXCEPTION.—The requirements
under this section shall not apply to an individual with respect to an
application for patent in which the individual is named as the
inventor or a joint inventor and that claims the benefit under section
120 ,
121, or
365(c) of the
filing of an earlier-filed application, if—

(A) an oath or declaration
meeting the requirements of subsection (a) was executed by the
individual and was filed in connection with the earlier-filed
application;

(B) a substitute statement
meeting the requirements of subsection (d) was filed in
connection with the earlier filed application with respect to
the individual; or

(C) an assignment meeting the
requirements of subsection (e) was executed with respect to the
earlier-filed application by the individual and was recorded in
connection with the earlier-filed application.

(2) COPIES OF OATHS, DECLARATIONS,
STATEMENTS, OR ASSIGNMENTS.—Notwithstanding paragraph (1), the
Director may require that a copy of the executed oath or declaration,
the substitute statement, or the assignment filed in connection with
the earlier-filed application be included in the later-filed
application.

(1) IN GENERAL.—Any person making a
statement required under this section may withdraw, replace, or
otherwise correct the statement at any time. If a change is made in
the naming of the inventor requiring the filing of 1 or more
additional statements under this section, the Director shall establish
regulations under which such additional statements may be
filed.

(2) SUPPLEMENTAL STATEMENTS NOT
REQUIRED.—If an individual has executed an oath or declaration meeting
the requirements of subsection (a) or an assignment meeting the
requirements of subsection (e) with respect to an application for
patent, the Director may not thereafter require that individual to
make any additional oath, declaration, or other statement equivalent
to those required by this section in connection with the application
for patent or any patent issuing thereon.

(3) SAVINGS CLAUSE.—A patent shall
not be invalid or unenforceable based upon the failure to comply with
a requirement under this section if the failure is remedied as
provided under paragraph (1).

(i) ACKNOWLEDGMENT OF PENALTIES.—Any
declaration or statement filed pursuant to this section shall contain an
acknowledgment that any willful false statement made in such declaration or
statement is punishable under
section 1001 of title 18
by fine or imprisonment of not more than 5 years, or both.

35 U.S.C. 115 (pre-AIA)
Oath of applicant.

[Editor Note:
Not applicable to any patent
application filed on or after September 16, 2012. See
35 U.S.C.
115
for the law otherwise
applicable.]

The applicant shall make oath
that he believes himself to be the original and first inventor of the process,
machine, manufacture, or composition of matter, or improvement thereof, for which he
solicits a patent; and shall state of what country he is a citizen. Such oath may be
made before any person within the United States authorized by law to administer
oaths, or, when made in a foreign country, before any diplomatic or consular officer
of the United States authorized to administer oaths, or before any officer having an
official seal and authorized to administer oaths in the foreign country in which the
applicant may be, whose authority is proved by certificate of a diplomatic or
consular officer of the United States, or apostille of an official designated by a
foreign country which, by treaty or convention, accords like effect to apostilles of
designated officials in the United States. Such oath is valid if it complies with the
laws of the state or country where made. When the application is made as provided in
this title by a person other than the inventor, the oath may be so varied in form
that it can be made by him. For purposes of this section, a consular officer shall
include any United States citizen serving overseas, authorized to perform notarial
functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C.
4221).

35 U.S.C. 116
Inventors.

[Editor Note: Applicable to proceedings commenced on or after
Sept. 16, 2012. See
35 U.S.C. 116 (pre-AIA) for
the law otherwise applicable.]

(a) JOINT INVENTIONS.—When an invention
is made by two or more persons jointly, they shall apply for patent jointly
and each make the required oath, except as otherwise provided in this title.
Inventors may apply for a patent jointly even though (1) they did not
physically work together or at the same time, (2) each did not make the same
type or amount of contribution, or (3) each did not make a contribution to
the subject matter of every claim of the patent.

(b) OMITTED INVENTOR.—If
a joint inventor refuses to join in an application for patent or cannot be
found or reached after diligent effort, the application may be made by the
other inventor on behalf of himself and the omitted inventor. The Director,
on proof of the pertinent facts and after such notice to the omitted
inventor as he prescribes, may grant a patent to the inventor making the
application, subject to the same rights which the omitted inventor would
have had if he had been joined. The omitted inventor may subsequently join
in the application.

(c) CORRECTION OF ERRORS
IN APPLICATION.—Whenever through error a person is named in an application
for patent as the inventor, or through an error an inventor is not named in
an application, the Director may permit the application to be amended
accordingly, under such terms as he prescribes.

35 U.S.C. 116 (pre-AIA)
Inventors.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
116
for the law otherwise
applicable.]

When an invention is made by two
or more persons jointly, they shall apply for patent jointly and each make the
required oath, except as otherwise provided in this title. Inventors may apply for a
patent jointly even though (1) they did not physically work together or at the same
time, (2) each did not make the same type or amount of contribution, or (3) each did
not make a contribution to the subject matter of every claim of the
patent.

If a joint inventor refuses to
join in an application for patent or cannot be found or reached after diligent
effort, the application may be made by the other inventor on behalf of himself and
the omitted inventor. The Director, on proof of the pertinent facts and after such
notice to the omitted inventor as he prescribes, may grant a patent to the inventor
making the application, subject to the same rights which the omitted inventor would
have had if he had been joined. The omitted inventor may subsequently join in the
application.

Whenever through error a person
is named in an application for patent as the inventor, or through an error an
inventor is not named in an application, and such error arose without any deceptive
intention on his part, the Director may permit the application to be amended
accordingly, under such terms as he prescribes.

35 U.S.C. 117
Death or incapacity of inventor.

Legal representatives of deceased
inventors and of those under legal incapacity may make application for patent upon
compliance with the requirements and on the same terms and conditions applicable to
the inventor.

35 U.S.C. 118
Filing by other than inventor.

[Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See
35 U.S.C. 118 (pre-AIA) for
the law otherwise applicable.]

A person to whom the inventor has assigned or is under an obligation to
assign the invention may make an application for patent. A person who otherwise shows
sufficient proprietary interest in the matter may make an application for patent on
behalf of and as agent for the inventor on proof of the pertinent facts and a showing
that such action is appropriate to preserve the rights of the parties. If the
Director grants a patent on an application filed under this section by a person other
than the inventor, the patent shall be granted to the real party in interest and upon
such notice to the inventor as the Director considers to be
sufficient.

35 U.S.C. 118 (pre-AIA)
Filing by other than inventor.

[Editor Note:
Not applicable to any patent
application filed on or after September 16, 2012. See
35 U.S.C.
118
for the law otherwise
applicable.]

Whenever an inventor refuses to
execute an application for patent, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or agreed in writing to assign the
invention or who otherwise shows sufficient proprietary interest in the matter
justifying such action, may make application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such action is
necessary to preserve the rights of the parties or to prevent irreparable damage; and
the Director may grant a patent to such inventor upon such notice to him as the
Director deems sufficient, and on compliance with such regulations as he
prescribes.

35 U.S.C. 119
Benefit of earlier filing date; right of
priority.

[Editor Note: 35 U.S.C. 119(a) as set forth below is only
applicable to patent applications subject to the first inventor to file provisions
of the AIA (see
35 U.S.C. 100 (note)). See
35 U.S.C.
119(a) (pre-AIA)
for the law otherwise
applicable.]

(a) An application for
patent for an invention filed in this country by any person who has, or
whose legal representatives or assigns have, previously regularly filed an
application for a patent for the same invention in a foreign country which
affords similar privileges in the case of applications filed in the United
States or to citizens of the United States, or in a WTO member country,
shall have the same effect as the same application would have if filed in
this country on the date on which the application for patent for the same
invention was first filed in such foreign country, if the application in
this country is filed within twelve months from the earliest date on which
such foreign application was filed.

(b)

(1) No application for
patent shall be entitled to this right of priority unless a claim is
filed in the Patent and Trademark Office, identifying the foreign
application by specifying the application number on that foreign
application, the intellectual property authority or country in or for
which the application was filed, and the date of filing the
application, at such time during the pendency of the application as
required by the Director.

(2) The Director may
consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim. The Director may establish
procedures, including the payment of a surcharge, to accept an
unintentionally delayed claim under this section.

(3) The Director may
require a certified copy of the original foreign application,
specification, and drawings upon which it is based, a translation if
not in the English language, and such other information as the
Director considers necessary. Any such certification shall be made by
the foreign intellectual property authority in which the foreign
application was filed and show the date of the application and of the
filing of the specification and other papers.

(c) In like manner and
subject to the same conditions and requirements, the right provided in this
section may be based upon a subsequent regularly filed application in the
same foreign country instead of the first filed foreign application,
provided that any foreign application filed prior to such subsequent
application has been withdrawn, abandoned, or otherwise disposed of, without
having been laid open to public inspection and without leaving any rights
outstanding, and has not served, nor thereafter shall serve, as a basis for
claiming a right of priority.

(d) Applications for
inventors’ certificates filed in a foreign country in which applicants have
a right to apply, at their discretion, either for a patent or for an
inventor’s certificate shall be treated in this country in the same manner
and have the same effect for purpose of the right of priority under this
section as applications for patents, subject to the same conditions and
requirements of this section as apply to applications for patents, provided
such applicants are entitled to the benefits of the Stockholm Revision of
the Paris Convention at the time of such filing.

(e)

(1) An application for
patent filed under
section
111(a)
or
section
363
for an invention disclosed in the manner
provided by
section 112(a)
(other than the requirement to disclose the best mode) in a
provisional application filed under
section 111(b), by an inventor or inventors
named in the provisional application, shall have the same effect, as
to such invention, as though filed on the date of the provisional
application filed under
section
111(b)
, if the application for patent filed
under
section 111(a) or
section 363 is
filed not later than 12 months after the date on which the provisional
application was filed and if it contains or is amended to contain a
specific reference to the provisional application. No application
shall be entitled to the benefit of an earlier filed provisional
application under this subsection unless an amendment containing the
specific reference to the earlier filed provisional application is
submitted at such time during the pendency of the application as
required by the Director. The Director may consider the failure to
submit such an amendment within that time period as a waiver of any
benefit under this subsection. The Director may establish procedures,
including the payment of a surcharge, to accept an unintentionally
delayed submission of an amendment under this subsection during the
pendency of the application

(2) A provisional
application filed under
section 111(b)
may not be relied upon in any proceeding in the
Patent and Trademark Office unless the fee set forth in subparagraph
(A) or (C) of
section 41(a)(1)
has been paid.

(3) If the day that is
12 months after the filing date of a provisional application falls on
a Saturday, Sunday, or Federal holiday within the District of
Columbia, the period of pendency of the provisional application shall
be extended to the next succeeding secular or business
day.

(f) Applications for plant
breeder’s rights filed in a WTO member country (or in a foreign UPOV
Contracting Party) shall have the same effect for the purpose of the right
of priority under subsections (a) through (c) of this section as
applications for patents, subject to the same conditions and requirements of
this section as apply to applications for patents.

(g) As used in this section—

(1) the term “WTO
member country” has the same meaning as the term is defined in
section 104(b)(2);
and

(2) the term “UPOV
Contracting Party” means a member of the International Convention for
the Protection of New Varieties of Plants.

[Editor Note: Pre-AIA 35 U.S.C. 119(a) as set forth below is
applicable to patent applications
not subject to the first inventor
to file provisions of the AIA (see
35 U.S.C. 100 (note)). See
35 U.S.C.
119(a)
for the law otherwise
applicable.]

(a) An application for
patent for an invention filed in this country by any person who has, or
whose legal representatives or assigns have, previously regularly filed an
application for a patent for the same invention in a foreign country which
affords similar privileges in the case of applications filed in the United
States or to citizens of the United States, or in a WTO member country,
shall have the same effect as the same application would have if filed in
this country on the date on which the application for patent for the same
invention was first filed in such foreign country, if the application in
this country is filed within twelve months from the earliest date on which
such foreign application was filed; but no patent shall be granted on any
application for patent for an invention which had been patented or described
in a printed publication in any country more than one year before the date
of the actual filing of the application in this country, or which had been
in public use or on sale in this country more than one year prior to such
filing.

35 U.S.C. 120
Benefit of earlier filing date in the United
States.

An application for patent for
an invention disclosed in the manner provided by
section 112(a) (other than the
requirement to disclose the best mode) in an application previously filed in the
United States, or as provided by
section 363 which names an
inventor or joint inventor in the previously filed application shall have the same
effect, as to such invention, as though filed on the date of the prior application,
if filed before the patenting or abandonment of or termination of proceedings on the
first application or on an application similarly entitled to the benefit of the
filing date of the first application and if it contains or is amended to contain a
specific reference to the earlier filed application. No application shall be entitled
to the benefit of an earlier filed application under this section unless an amendment
containing the specific reference to the earlier filed application is submitted at
such time during the pendency of the application as required by the Director. The
Director may consider the failure to submit such an amendment within that time period
as a waiver of any benefit under this section. The Director may establish procedures,
including the payment of a surcharge, to accept an unintentionally delayed submission
of an amendment under this section.

35 U.S.C. 120 (pre-AIA)
Benefit of earlier filing date in the United
States.

[Editor Note:
Not applicable to patent applications
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 120 for the law otherwise
applicable.]

An application for patent for
an invention disclosed in the manner provided by
section 112(a) (other than the
requirement to disclose the best mode) in an application previously filed in the
United States, or as provided by
section 363, which is filed by an
inventor or inventors named in the previously filed application shall have the same
effect, as to such invention, as though filed on the date of the prior application,
if filed before the patenting or abandonment of or termination of proceedings on the
first application or on an application similarly entitled to the benefit of the
filing date of the first application and if it contains or is amended to contain a
specific reference to the earlier filed application. No application shall be entitled
to the benefit of an earlier filed application under this section unless an amendment
containing the specific reference to the earlier filed application is submitted at
such time during the pendency of the application as required by the Director. The
Director may consider the failure to submit such an amendment within that time period
as a waiver of any benefit under this section. The Director may establish procedures,
including the payment of a surcharge, to accept an unintentionally delayed submission
of an amendment under this section.

35 U.S.C. 121
Divisional applications.

[Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See
35 U.S.C. 121 (pre-AIA) for
the law otherwise applicable.]

If two or more independent and
distinct inventions are claimed in one application, the Director may require the
application to be restricted to one of the inventions. If the other invention is made
the subject of a divisional application which complies with the requirements of
section
120
it shall be entitled to the benefit of the filing date of
the original application. A patent issuing on an application with respect to which a
requirement for restriction under this section has been made, or on an application
filed as a result of such a requirement, shall not be used as a reference either in
the Patent and Trademark Office or in the courts against a divisional application or
against the original application or any patent issued on either of them, if the
divisional application is filed before the issuance of the patent on the other
application. The validity of a patent shall not be questioned for failure of the
Director to require the application to be restricted to one
invention.

35 U.S.C. 121 (pre-AIA)
Divisional applications.

[Editor Note:
Not applicable to any patent
application filed on or after September 16, 2012. See
35 U.S.C.
121
for the law otherwise
applicable.]

If two or more independent and
distinct inventions are claimed in one application, the Director may require the
application to be restricted to one of the inventions. If the other invention is made
the subject of a divisional application which complies with the requirements of
section 120 of this title it shall be entitled to the benefit
of the filing date of the original application. A patent issuing on an application
with respect to which a requirement for restriction under this section has been made,
or on an application filed as a result of such a requirement, shall not be used as a
reference either in the Patent and Trademark Office or in the courts against a
divisional application or against the original application or any patent issued on
either of them, if the divisional application is filed before the issuance of the
patent on the other application. If a divisional application is directed solely to
subject matter described and claimed in the original application as filed, the
Director may dispense with signing and execution by the inventor. The validity of a
patent shall not be questioned for failure of the Director to require the application
to be restricted to one invention.

(a) CONFIDENTIALITY.— Except
as provided in subsection (b), applications for patents shall be kept in
confidence by the Patent and Trademark Office and no information concerning
the same given without authority of the applicant or owner unless necessary
to carry out the provisions of an Act of Congress or in such special
circumstances as may be determined by the Director.

(b) PUBLICATION.—

(1) IN GENERAL.—

(A) Subject to
paragraph (2), each application for a patent shall be published,
in accordance with procedures determined by the Director,
promptly after the expiration of a period of 18 months from the
earliest filing date for which a benefit is sought under this
title. At the request of the applicant, an application may be
published earlier than the end of such 18-month
period.

(B) No
information concerning published patent applications shall be
made available to the public except as the Director
determines.

(C) Notwithstanding any other provision of law, a determination by
the Director to release or not to release information concerning
a published patent application shall be final and
nonreviewable.

(i) If an
applicant makes a request upon filing, certifying that the
invention disclosed in the application has not and will
not be the subject of an application filed in another
country, or under a multilateral international agreement,
that requires publication of applications 18 months after
filing, the application shall not be published as provided
in paragraph (1).

(ii) An
applicant may rescind a request made under clause (i) at
any time.

(iii) An
applicant who has made a request under clause (i) but who
subsequently files, in a foreign country or under a
multilateral international agreement specified in clause
(i), an application directed to the invention disclosed in
the application filed in the Patent and Trademark Office,
shall notify the Director of such filing not later than 45
days after the date of the filing of such foreign or
international application. A failure of the applicant to
provide such notice within the prescribed period shall
result in the application being regarded as abandoned,
unless it is shown to the satisfaction of the Director
that the delay in submitting the notice was
unintentional.

(iv) If an
applicant rescinds a request made under clause (i) or
notifies the Director that an application was filed in a
foreign country or under a multilateral international
agreement specified in clause (i), the application shall
be published in accordance with the provisions of
paragraph (1) on or as soon as is practical after the date
that is specified in clause (i).

(v) If an
applicant has filed applications in one or more foreign
countries, directly or through a multilateral
international agreement, and such foreign filed
applications corresponding to an application filed in the
Patent and Trademark Office or the description of the
invention in such foreign filed applications is less
extensive than the application or description of the
invention in the application filed in the Patent and
Trademark Office, the applicant may submit a redacted copy
of the application filed in the Patent and Trademark
Office eliminating any part or description of the
invention in such application that is not also contained
in any of the corresponding applications filed in a
foreign country. The Director may only publish the
redacted copy of the application unless the redacted copy
of the application is not received within 16 months after
the earliest effective filing date for which a benefit is
sought under this title. The provisions of
section
154(d)
shall not apply to a claim if
the description of the invention published in the redacted
application filed under this clause with respect to the
claim does not enable a person skilled in the art to make
and use the subject matter of the claim.

(c) PROTEST AND PRE-ISSUANCE
OPPOSITION.— The Director shall establish appropriate procedures to ensure
that no protest or other form of pre-issuance opposition to the grant of a
patent on an application may be initiated after publication of the
application without the express written consent of the
applicant.

(d) NATIONAL SECURITY.— No
application for patent shall be published under subsection (b)(1) if the
publication or disclosure of such invention would be detrimental to the
national security. The Director shall establish appropriate procedures to
ensure that such applications are promptly identified and the secrecy of
such inventions is maintained in accordance with
chapter
17
.

(e) PREISSUANCE SUBMISSIONS BY THIRD
PARTIES.—

(1) IN GENERAL.—Any third party may
submit for consideration and inclusion in the record of a patent
application, any patent, published patent application, or other
printed publication of potential relevance to the examination of the
application, if such submission is made in writing before the earlier
of—

(A) the date a notice of
allowance under section
151 is given
or mailed in the application for patent; or

(B) the later
of—

(i) 6 months after the
date on which the application for patent is first
published under section
122 by the Office, or

(ii) the date of the
first rejection under section
132 of any claim by the examiner
during the examination of the application for patent.

(2) OTHER REQUIREMENTS.—Any
submission under paragraph (1) shall—

(A) set forth a concise
description of the asserted relevance of each submitted
document;

(B) be accompanied by such fee
as the Director may prescribe; and

(C) include a statement by the
person making such submission affirming that the submission was
made in compliance with this section.

35 U.S.C. 123
Micro entity defined.

(a) IN GENERAL.—For purposes of this
title, the term "micro entity" means an applicant who makes a certification
that the applicant—

(1) qualifies as a small entity, as
defined in regulations issued by the Director;

(2) has not been named as an
inventor on more than 4 previously filed patent applications, other
than applications filed in another country, provisional applications
under section
111(b), or
international applications filed under the treaty defined in section
351(a) for which the basic national fee under
section
41(a) was not
paid;

(3) did not, in the calendar year
preceding the calendar year in which the applicable fee is being paid,
have a gross income, as defined in section 61(a) of the Internal
Revenue Code of 1986, exceeding 3 times the median household income
for that preceding calendar year, as most recently reported by the
Bureau of the Census; and

(4) has not assigned, granted, or
conveyed, and is not under an obligation by contract or law to assign,
grant, or convey, a license or other ownership interest in the
application concerned to an entity that, in the calendar year
preceding the calendar year in which the applicable fee is being paid,
had a gross income, as defined in section 61(a) of the Internal
Revenue Code of 1986, exceeding 3 times the median household income
for that preceding calendar year, as most recently reported by the
Bureau of the Census.

(b) APPLICATIONS RESULTING FROM PRIOR
EMPLOYMENT.—An applicant is not considered to be named on a previously filed
application for purposes of subsection (a)(2) if the applicant has assigned,
or is under an obligation by contract or law to assign, all ownership rights
in the application as the result of the applicant’s previous
employment.

(c) FOREIGN CURRENCY EXCHANGE RATE.—If
an applicant’s or entity’s gross income in the preceding calendar year is
not in United States dollars, the average currency exchange rate, as
reported by the Internal Revenue Service, during that calendar year shall be
used to determine whether the applicant’s or entity’s gross income exceeds
the threshold specified in paragraphs (3) or (4) of subsection
(a).

(d) INSTITUTIONS OF HIGHER EDUCATION.—For
purposes of this section, a micro entity shall include an applicant who
certifies that—

(1) the applicant’s employer, from
which the applicant obtains the majority of the applicant’s income, is
an institution of higher education as defined in section 101(a) of the
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

(2) the applicant has assigned,
granted, conveyed, or is under an obligation by contract or law, to
assign, grant, or convey, a license or other ownership interest in the
particular applications to such an institution of higher
education.

(e) DIRECTOR’S AUTHORITY.—In addition to
the limits imposed by this section, the Director may, in the Director’s
discretion, impose income limits, annual filing limits, or other limits on
who may qualify as a micro entity pursuant to this section if the Director
determines that such additional limits are reasonably necessary to avoid an
undue impact on other patent applicants or owners or are otherwise
reasonably necessary and appropriate. At least 3 months before any limits
proposed to be imposed pursuant to this subsection take effect, the Director
shall inform the Committee on the Judiciary of the House of Representatives
and the Committee on the Judiciary of the Senate of any such proposed
limits.

CHAPTER 12 - EXAMINATION OF APPLICATION

134 (transitional) Appeal to the Board of Patent Appeals
and Interferences.

134 (pre-AIA) Appeal to the Board of Patent Appeals and
Interferences.

135 Derivation proceedings.

135 (pre-AIA) Interferences.

35 U.S.C. 131
Examination of application.

The Director shall cause an
examination to be made of the application and the alleged new invention; and if on
such examination it appears that the applicant is entitled to a patent under the law,
the Director shall issue a patent therefor.

35 U.S.C. 132
Notice of rejection; reexamination.

(a) Whenever, on
examination, any claim for a patent is rejected, or any objection or
requirement made, the Director shall notify the applicant thereof, stating
the reasons for such rejection, or objection or requirement, together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of his application; and if after receiving
such notice, the applicant persists in his claim for a patent, with or
without amendment, the application shall be reexamined. No amendment shall
introduce new matter into the disclosure of the invention.

(b) The Director shall
prescribe regulations to provide for the continued examination of
applications for patent at the request of the applicant. The Director may
establish appropriate fees for such continued examination and shall provide
a 50 percent reduction in such fees for small entities that qualify for
reduced fees under
section
41(h)(1)
.

35 U.S.C. 133
Time for prosecuting application.

Upon failure of the applicant to
prosecute the application within six months after any action therein, of which notice
has been given or mailed to the applicant, or within such shorter time, not less than
thirty days, as fixed by the Director in such action, the application shall be
regarded as abandoned by the parties thereto, unless it be shown to the satisfaction
of the Director that such delay was unavoidable.

35 U.S.C. 134
Appeal to the Patent Trial and Appeal
Board.

[Editor Note: Applicable to proceedings commenced on or after September 16,
2012 and applicable to any patent application subject to the first inventor to
file provisions of the AIA (see
35 U.S.C. 100 (note)). See
35
U.S.C. 134 (transitional)
for the law applicable to
proceedings commenced on or after September 16, 2012 but
not
applicable
to any patent application subject to the first inventor to
file provisions of the AIA. See
35 U.S.C. 134 (pre-AIA) for
the law applicable to proceedings commenced before September 16,
2012.]

(a) PATENT APPLICANT.—
An applicant for a patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the Patent Trial and
Appeal Board, having once paid the fee for such appeal.

(b) PATENT OWNER.— A
patent owner in a reexamination may appeal from the final rejection of any
claim by the primary examiner to the Patent Trial and Appeal Board, having
once paid the fee for such appeal.

35 U.S.C. 134 (transitional)
Appeal to the Board of Patent Appeals and
Interferences.

[Editor Note: Applicable to proceedings commenced on or after September 16,
2012, but
not applicable to any patent application subject to the
first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 134 for the law
applicable to patent applications subject to the first inventor to file provisions
of the AIA.] See
35 U.S.C. 134 (pre-AIA) for the law applicable to
proceedings commenced before September 16, 2012.]

(a) PATENT APPLICANT.— An
applicant for a patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for such
appeal.

(b) PATENT OWNER.— A
patent owner in a reexamination may appeal from the final rejection of any
claim by the primary examiner to the Board of Patent Appeals and
Interferences, having once paid the fee for such appeal.

35 U.S.C. 134 (pre-AIA)
Appeal to the Board of Patent Appeals and
Interferences.

(a) PATENT APPLICANT.— An
applicant for a patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for such
appeal.

(b) PATENT OWNER.— A patent
owner in any reexamination proceeding may appeal from the final rejection of
any claim by the primary examiner to the Board of Patent Appeals and
Interferences, having once paid the fee for such appeal.

(c) THIRD-PARTY.— A
third-party requester in an inter partes proceeding may appeal to the Board
of Patent Appeals and Interferences from the final decision of the primary
examiner favorable to the patentability of any original or proposed amended
or new claim of a patent, having once paid the fee for such
appeal.

(1) IN GENERAL.— An applicant for patent may file a petition
with respect to an invention to institute a derivation proceeding in
the Office. The petition shall set forth with particularity the basis
for finding that an individual named in an earlier application as the
inventor or a joint inventor derived such invention from an individual
named in the petitioner’s application as the inventor or a joint
inventor and, without authorization, the earlier application claiming
such invention was filed. Whenever the Director determines that a
petition filed under this subsection demonstrates that the standards
for instituting a derivation proceeding are met, the Director may
institute a derivation proceeding.

(2) TIME FOR FILING.—A petition under this section with
respect to an invention that is the same or substantially the same
invention as a claim contained in a patent issued on an earlier
application, or contained in an earlier application when published or
deemed published under section
122(b), may not be
filed unless such petition is filed during the 1-year period following
the date on which the patent containing such claim was granted or the
earlier application containing such claim was published, whichever is
earlier.

(3) EARLIER APPLICATION.—For purposes of this section, an
application shall not be deemed to be an earlier application with
respect to an invention, relative to another application, unless a
claim to the invention was or could have been made in such application
having an effective filing date that is earlier than the effective
filing date of any claim to the invention that was or could have been
made in such other application.

(4) NO APPEAL.—A determination by the Director whether to
institute a derivation proceeding under paragraph (1) shall be final
and not appealable.

(b) DETERMINATION BY PATENT TRIAL AND
APPEAL BOARD.— In a derivation proceeding instituted under subsection (a),
the Patent Trial and Appeal Board shall determine whether an inventor named
in the earlier application derived the claimed invention from an inventor
named in the petitioner’s application and, without authorization, the
earlier application claiming such invention was filed. In appropriate
circumstances, the Patent Trial and Appeal Board may correct the naming of
the inventor in any application or patent at issue. The Director shall
prescribe regulations setting forth standards for the conduct of derivation
proceedings, including requiring parties to provide sufficient evidence to
prove and rebut a claim of derivation.

(c) DEFERRAL OF DECISION.—The Patent Trial
and Appeal Board may defer action on a petition for a derivation proceeding
until the expiration of the 3-month period beginning on the date on which
the Director issues a patent that includes the claimed invention that is the
subject of the petition. The Patent Trial and Appeal Board also may defer
action on a petition for a derivation proceeding, or stay the proceeding
after it has been instituted, until the termination of a proceeding under
chapter
30
, 31, or 32 involving the patent of the earlier
applicant.

(d) EFFECT OF FINAL DECISION.—The final
decision of the Patent Trial and Appeal Board, if adverse to claims in an
application for patent, shall constitute the final refusal by the Office on
those claims. The final decision of the Patent Trial and Appeal Board, if
adverse to claims in a patent, shall, if no appeal or other review of the
decision has been or can be taken or had, constitute cancellation of those
claims, and notice of such cancellation shall be endorsed on copies of the
patent distributed after such cancellation.

(e) SETTLEMENT.—Parties to a proceeding
instituted under subsection (a) may terminate the proceeding by filing a
written statement reflecting the agreement of the parties as to the correct
inventor of the claimed invention in dispute. Unless the Patent Trial and
Appeal Board finds the agreement to be inconsistent with the evidence of
record, if any, it shall take action consistent with the agreement. Any
written settlement or understanding of the parties shall be filed with the
Director. At the request of a party to the proceeding, the agreement or
understanding shall be treated as business confidential information, shall
be kept separate from the file of the involved patents or applications, and
shall be made available only to Government agencies on written request, or
to any person on a showing of good cause.

(f) ARBITRATION.—Parties to a proceeding
instituted under subsection (a) may, within such time as may be specified by
the Director by regulation, determine such contest or any aspect thereof by
arbitration. Such arbitration shall be governed by the provisions of title
9, to the extent such title is not inconsistent with this section. The
parties shall give notice of any arbitration award to the Director, and such
award shall, as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall be unenforceable
until such notice is given. Nothing in this subsection shall preclude the
Director from determining the patentability of the claimed inventions
involved in the proceeding.

*NOTE: The provisions of
35 U.S.C. 135
(pre-AIA)
, as in effect on
March
15, 2013
, shall apply to each claim of an
application for patent, and any patent issued thereon, for which the
first inventor to file provisions of the AIA also apply
(see
35 U.S.C. 100
(note)
), if such application or patent contains
or contained at any time—

(A) a claim to an
invention having an effective filing date as defined in
section
100(i), that occurs before March 16,
2013; or

(B) a specific
reference under section
120
,
121, or
365(c) to any patent or application
that contains or contained at any time such a
claim.

35 U.S.C. 135 (pre-AIA)
Interferences.

[Editor Note: Except as noted below,*
not applicable
to any patent application subject to the first inventor to file provisions of the
AIA (see
35 U.S.C. 100 (note)). See
35
U.S.C. 135
for the law otherwise
applicable.]

(a) Whenever an application
is made for a patent which, in the opinion of the Director, would interfere
with any pending application, or with any unexpired patent, an interference
may be declared and the Director shall give notice of such declaration to
the applicants, or applicant and patentee, as the case may be. The Board of
Patent Appeals and Interferences shall determine questions of priority of
the inventions and may determine questions of patentability. Any final
decision, if adverse to the claim of an applicant, shall constitute the
final refusal by the Patent and Trademark Office of the claims involved, and
the Director may issue a patent to the applicant who is adjudged the prior
inventor. A final judgment adverse to a patentee from which no appeal or
other review has been or can be taken or had shall constitute cancellation
of the claims involved in the patent, and notice of such cancellation shall
be endorsed on copies of the patent distributed after such cancellation by
the Patent and Trademark Office.

(b)

(1) A claim which is
the same as, or for the same or substantially the same subject matter
as, a claim of an issued patent may not be made in any application
unless such a claim is made prior to one year from the date on which
the patent was granted.

(2) A claim which is
the same as, or for the same or substantially the same subject matter
as, a claim of an application published under
section 122(b) may be made in an application
filed after the application is published only if the claim is made
before 1 year after the date on which the application is
published.

(c) Any agreement or
understanding between parties to an interference, including any collateral
agreements referred to therein, made in connection with or in contemplation
of the termination of the interference, shall be in writing and a true copy
thereof filed in the Patent and Trademark Office before the termination of
the interference as between the said parties to the agreement or
understanding. If any party filing the same so requests, the copy shall be
kept separate from the file of the interference, and made available only to
Government agencies on written request, or to any person on a showing of
good cause. Failure to file the copy of such agreement or understanding
shall render permanently unenforceable such agreement or understanding and
any patent of such parties involved in the interference or any patent
subsequently issued on any application of such parties so involved. The
Director may, however, on a showing of good cause for failure to file within
the time prescribed, permit the filing of the agreement or understanding
during the six-month period subsequent to the termination of the
interference as between the parties to the agreement or
understanding.

The Director shall give
notice to the parties or their attorneys of record, a reasonable time prior
to said termination, of the filing requirement of this section. If the
Director gives such notice at a later time, irrespective of the right to
file such agreement or understanding within the six-month period on a
showing of good cause, the parties may file such agreement or understanding
within sixty days of the receipt of such notice.

Any discretionary action
of the Director under this subsection shall be reviewable under section 10
of the Administrative Procedure Act.

(d) Parties to a patent
interference, within such time as may be specified by the Director by
regulation, may determine such contest or any aspect thereof by arbitration.
Such arbitration shall be governed by the provisions of title 9 to the
extent such title is not inconsistent with this section. The parties shall
give notice of any arbitration award to the Director, and such award shall,
as between the parties to the arbitration, be dispositive of the issues to
which it relates. The arbitration award shall be unenforceable until such
notice is given. Nothing in this subsection shall preclude the Director from
determining patentability of the invention involved in the
interference.

*
NOTE: The
provisions of
35 U.S.C. 135
(pre-AIA)
, as in effect on
March
15, 2013
, shall apply to each claim of an
application for patent, and any patent issued thereon, for which the
first inventor to file provisions of the AIA also apply
(see
35 U.S.C. 100
(note)
), if such application or patent contains
or contained at any time—

(A) a claim to an
invention having an effective filing date as defined in
section
100(i), that occurs before March 16,
2013; or

(B) a specific
reference under section
120
,
121, or
365(c) to any patent or application
that contains or contained at any time such a
claim.

35 U.S.C. 141
Appeal to Court of Appeals for the Federal
Circuit.

[Editor Note: Applicable to proceedings commenced on or after
September 16, 2012. See
35 U.S.C. 141 (pre-AIA) for
the law otherwise applicable.*]

(a) EXAMINATIONS.—An applicant who is
dissatisfied with the final decision in an appeal to the Patent Trial and
Appeal Board under section
134(a) may appeal the
Board’s decision to the United States Court of Appeals for the Federal
Circuit. By filing such an appeal, the applicant waives his or her right to
proceed under section 145.

(b) REEXAMINATIONS.—A patent owner who is
dissatisfied with the final decision in an appeal of a reexamination to the
Patent Trial and Appeal Board under section
134(a) may appeal the Board’s decision only to the
United States Court of Appeals for the Federal Circuit.

(c) POST-GRANT AND INTER PARTES REVIEWS.—A
party to an inter partes review or a post-grant review who is dissatisfied
with the final written decision of the Patent Trial and Appeal Board under
section
318(a) or
328(a) (as the case may
be) may appeal the Board’s decision only to the United States Court of
Appeals for the Federal Circuit.

(d) DERIVATION PROCEEDINGS.—A party to a
derivation proceeding who is dissatisfied with the final decision of the
Patent Trial and Appeal Board in the proceeding may appeal the decision to
the United States Court of Appeals for the Federal Circuit, but such appeal
shall be dismissed if any adverse party to such derivation proceeding,
within 20 days after the appellant has filed notice of appeal in accordance
with section
142, files notice with
the Director that the party elects to have all further proceedings conducted
as provided in section
146. If the appellant
does not, within 30 days after the filing of such notice by the adverse
party, file a civil action under section
146, the Board’s decision shall govern the further
proceedings in the case.

35 U.S.C. 141 (pre-AIA)
Appeal to the Court of Appeals for the Federal
Circuit.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012.* See
35 U.S.C.
141
for the law otherwise
applicable.]

An applicant dissatisfied with
the decision in an appeal to the Board of Patent Appeals and Interferences under
section 134 of this title may appeal the decision to the
United States Court of Appeals for the Federal Circuit. By filing such an appeal the
applicant waives his or her right to proceed under
section
145
of this title. A patent owner, or a third-party requester
in an inter partes reexamination proceeding, who is in any reexamination proceeding
dissatisfied with the final decision in an appeal to the Board of Patent Appeals and
Interferences under
section 134 may appeal the
decision only to the United States Court of Appeals for the Federal Circuit. A party
to an interference dissatisfied with the decision of the Board of Patent Appeals and
Interferences on the interference may appeal the decision to the United States Court
of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse
party to such interference, within twenty days after the appellant has filed notice
of appeal in accordance with
section 142 of this title, files
notice with the Director that the party elects to have all further proceedings
conducted as provided in
section 146 of this title. If the
appellant does not, within thirty days after filing of such notice by the adverse
party, file a civil action under
section 146, the decision
appealed from shall govern the further proceedings in the case.

35 U.S.C. 142
Notice of appeal.

When an appeal is taken to the
United States Court of Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal directed to the Director,
within such time after the date of the decision from which the appeal is taken as the
Director prescribes, but in no case less than 60 days after that
date.

35 U.S.C. 143
Proceedings on appeal.

[Editor Note: Applicable to proceedings commenced on or after
Sept. 16, 2012. See
35 U.S.C. 143 (pre-AIA) for
the law otherwise applicable.]

With respect to an appeal
described in
section 142, the Director shall transmit to the United States
Court of Appeals for the Federal Circuit a certified list of the documents comprising
the record in the Patent and Trademark Office. The court may request that the
Director forward the original or certified copies of such documents during the
pendency of the appeal. In an ex parte case, the Director shall submit to the court
in writing the grounds for the decision of the Patent and Trademark Office,
addressing all of the issues raised in the appeal. The Director shall have the right
to intervene in an appeal from a decision entered by the Patent Trial and Appeal
Board in a derivation proceeding under section
135
or in an inter partes or post-grant review under
chapter
31
or
32.

35 U.S.C. 143 (pre-AIA)
Proceedings on appeal.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
143
for the law otherwise
applicable.]

With respect to an appeal
described in
section 142 of this title, the
Director shall transmit to the United States Court of Appeals for the Federal Circuit
a certified list of the documents comprising the record in the Patent and Trademark
Office. The court may request that the Director forward the original or certified
copies of such documents during the pendency of the appeal. In an ex parte case or
any reexamination case, the Director shall submit to the court in writing the grounds
for the decision of the Patent and Trademark Office, addressing all the issues
involved in the appeal. The court shall, before hearing an appeal, give notice of the
time and place of the hearing to the Director and the parties in the
appeal.

35 U.S.C. 144
Decision on appeal.

The United States Court of
Appeals for the Federal Circuit shall review the decision from which an appeal is
taken on the record before the Patent and Trademark Office. Upon its determination
the court shall issue to the Director its mandate and opinion, which shall be entered
of record in the Patent and Trademark Office and shall govern the further proceedings
in the case.

An applicant dissatisfied with
the decision of the Patent Trial and Appeal Board in an appeal under
section
134(a)
may, unless appeal has been taken to the United States
Court of Appeals for the Federal Circuit, have remedy by civil action against the
Director in the United States District Court for the Eastern District of Virginia if
commenced within such time after such decision, not less than sixty days, as the
Director appoints. The court may adjudge that such applicant is entitled to receive a
patent for his invention, as specified in any of his claims involved in the decision
of the Patent Trial and Appeal Board, as the facts in the case may appear, and such
adjudication shall authorize the Director to issue such patent on compliance with the
requirements of law. All the expenses of the proceedings shall be paid by the
applicant.

35 U.S.C. 145 (pre-AIA)
Civil action to obtain patent.

[Editor Note:
Not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
). See
35 U.S.C. 145
for the law otherwise applicable.]

An applicant dissatisfied with
the decision of the Board of Patent Appeals and Interferences in an appeal under
section 134(a) may, unless appeal has been taken to the United
States Court of Appeals for the Federal Circuit, have remedy by civil action against
the Director in the United States District Court for the Eastern District of Virginia
if commenced within such time after such decision, not less than sixty days, as the
Director appoints. The court may adjudge that such applicant is entitled to receive a
patent for his invention, as specified in any of his claims involved in the decision
of the Board of Patent Appeals and Interferences, as the facts in the case may
appear, and such adjudication shall authorize the Director to issue such patent on
compliance with the requirements of law. All the expenses of the proceedings shall be
paid by the applicant.

Any party to a derivation
proceeding dissatisfied with the decision of the Patent Trial and Appeal Board on the
derivation proceeding, may have remedy by civil action, if commenced within such time
after such decision, not less than sixty days, as the Director appoints or as
provided in
section
141
, unless he has appealed to the United States Court of
Appeals for the Federal Circuit, and such appeal is pending or has been decided. In
such suits the record in the Patent and Trademark Office shall be admitted on motion
of either party upon the terms and conditions as to costs, expenses, and the further
cross-examination of the witnesses as the court imposes, without prejudice to the
right of the parties to take further testimony. The testimony and exhibits of the
record in the Patent and Trademark Office when admitted shall have the same effect as
if originally taken and produced in the suit.

Such suit may be instituted
against the party in interest as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any party in interest may
become a party to the action. If there be adverse parties residing in a plurality of
districts not embraced within the same state, or an adverse party residing in a
foreign country, the United States District Court for the Eastern District of
Virginia shall have jurisdiction and may issue summons against the adverse parties
directed to the marshal of any district in which any adverse party resides. Summons
against adverse parties residing in foreign countries may be served by publication or
otherwise as the court directs. The Director shall not be a necessary party but he
shall be notified of the filing of the suit by the clerk of the court in which it is
filed and shall have the right to intervene. Judgment of the court in favor of the
right of an applicant to a patent shall authorize the Director to issue such patent
on the filing in the Patent and Trademark Office of a certified copy of the judgment
and on compliance with the requirements of law.

35 U.S.C. 146 (pre-AIA)
Civil action in case of interference.

[Editor Note:
Not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
). See
35 U.S.C. 146
for the law otherwise applicable.]

Any party to an interference
dissatisfied with the decision of the Board of Patent Appeals and Interferences on
the interference, may have remedy by civil action, if commenced within such time
after such decision, not less than sixty days, as the Director appoints or as
provided in
section 141, unless he has
appealed to the United States Court of Appeals for the Federal Circuit, and such
appeal is pending or has been decided. In such suits the record in the Patent and
Trademark Office shall be admitted on motion of either party upon the terms and
conditions as to costs, expenses, and the further cross-examination of the witnesses
as the court imposes, without prejudice to the right of the parties to take further
testimony. The testimony and exhibits of the record in the Patent and Trademark
Office when admitted shall have the same effect as if originally taken and produced
in the suit.

Such suit may be instituted
against the party in interest as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any party in interest may
become a party to the action. If there be adverse parties residing in a plurality of
districts not embraced within the same state, or an adverse party residing in a
foreign country, the United States District Court for the Eastern District of
Virginia shall have jurisdiction and may issue summons against the adverse parties
directed to the marshal of any district in which any adverse party resides. Summons
against adverse parties residing in foreign countries may be served by publication or
otherwise as the court directs. The Director shall not be a necessary party but he
shall be notified of the filing of the suit by the clerk of the court in which it is
filed and shall have the right to intervene. Judgment of the court in favor of the
right of an applicant to a patent shall authorize the Director to issue such patent
on the filing in the Patent and Trademark Office of a certified copy of the judgment
and on compliance with the requirements of law.

35 U.S.C. 151
Issue of patent.

If it appears that applicant is
entitled to a patent under the law, a written notice of allowance of the application
shall be given or mailed to the applicant. The notice shall specify a sum,
constituting the issue fee or a portion thereof, which shall be paid within three
months thereafter.

Upon payment of this sum the
patent shall issue, but if payment is not timely made, the application shall be
regarded as abandoned.

Any remaining balance of the
issue fee shall be paid within three months from the sending of a notice thereof,
and, if not paid, the patent shall lapse at the termination of this three-month
period. In calculating the amount of a remaining balance, charges for a page or less
may be disregarded.

If any payment required by this
section is not timely made, but is submitted with the fee for delayed payment and the
delay in payment is shown to have been unavoidable, it may be accepted by the
Director as though no abandonment or lapse had ever occurred.

35 U.S.C. 152
Issue of patent to assignee.

Patents may be granted to the
assignee of the inventor of record in the Patent and Trademark Office, upon the
application made and the specification sworn to by the inventor, except as otherwise
provided in this title.

35 U.S.C. 153
How issued.

Patents shall be issued in the
name of the United States of America, under the seal of the Patent and Trademark
Office, and shall be signed by the Director or have his signature placed thereon and
shall be recorded in the Patent and Trademark Office.

35 U.S.C. 154
Contents and term of patent; provisional rights.

[Editor Note: 35 U.S.C. 154(b)(1) as set forth below is only
applicable to patent applications subject to the first inventor to file provisions
of the AIA (see
35 U.S.C. 100 (note)). See
35
U.S.C. 154(b)(1) (pre-AIA)
for the law otherwise
applicable.]

(a) IN
GENERAL.—

(1) CONTENTS.—Every
patent shall contain a short title of the invention and a grant to the
patentee, his heirs or assigns, of the right to exclude others from
making, using, offering for sale, or selling the invention throughout
the United States or importing the invention into the United States,
and, if the invention is a process, of the right to exclude others
from using, offering for sale or selling throughout the United States,
or importing into the United States, products made by that process,
referring to the specification for the particulars
thereof.

(2) TERM.—Subject to
the payment of fees under this title, such grant shall be for a term
beginning on the date on which the patent issues and ending 20 years
from the date on which the application for the patent was filed in the
United States or, if the application contains a specific reference to
an earlier filed application or applications under
section 120,
121, or
365(c), from the date on which the earliest
such application was filed.

(3) PRIORITY.—Priority
under
section 119,
365(a), or
365(b) shall not
be taken into account in determining the term of a
patent.

(4) SPECIFICATION AND
DRAWING.—A copy of the specification and drawing shall be annexed to
the patent and be a part of such patent.

(b) ADJUSTMENT OF PATENT
TERM.—

(1) PATENT TERM
GUARANTEES.—

(A) GUARANTEE OF
PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to the failure of the Patent and Trademark
Office to—

(i) provide at least one of the notifications under
section
132
or a notice of allowance under
section
151
not later than 14 months after—

(I) the date on which an application was filed under
section 111(a);
or

(II) the date of commencement of the national stage
under
section 371 in an
international application;

(ii) respond to a reply under
section
132
, or to an appeal taken under
section
134
, within 4 months after the date
on which the reply was filed or the appeal was
taken;

(iii) act on
an application within 4 months after the date of a
decision by the Patent Trial and Appeal Board under
section
134
or
135 or
a decision by a Federal court under
section
141
,
145,
or
146 in
a case in which allowable claims remain in the
application; or

(iv) issue
a patent within 4 months after the date on which the issue
fee was paid under
section
151
and all outstanding requirements
were satisfied,

the term of the patent shall be extended 1 day for
each day after the end of the period specified in clause (i),
(ii), (iii), or (iv), as the case may be, until the action
described in such clause is taken.

(B) GUARANTEE OF
NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to the failure of the United States Patent
and Trademark Office to issue a patent within 3 years after the
actual filing date of the application under
section
111(a)
in the United States or, in the
case of an international application, the date of commencement
of the national stage under
section 371
in the international application not including—

(i) any
time consumed by continued examination of the application
requested by the applicant under
section
132(b
);

(ii) any
time consumed by a proceeding under
section
135(a)
, any time consumed by the
imposition of an order under
section
181
, or any time consumed by
appellate review by the Patent Trial and Appeal Board or
by a Federal court; or

(iii) any
delay in the processing of the application by the United
States Patent and Trademark Office requested by the
applicant except as permitted by paragraph (3)(C),

the term of the patent shall be extended 1 day for
each day after the end of that 3-year period until the patent is
issued.

(C) GUARANTEE OR
ADJUSTMENTS FOR DELAYS DUE TO DERIVATION PROCEEDINGS, SECRECY
ORDERS, AND APPEALS.— Subject to the limitations under paragraph
(2), if the issue of an original patent is delayed due to—

(iii) appellate review by the Patent Trial and Appeal Board or
by a Federal court in a case in which the patent was
issued under a decision in the review reversing an adverse
determination of patentability,

the term of the patent shall be extended 1 day for
each day of the pendency of the proceeding, order, or review, as
the case may be.

(2) LIMITATIONS.—

(A) IN GENERAL.—
To the extent that periods of delay attributable to grounds
specified in paragraph (1) overlap, the period of any adjustment
granted under this subsection shall not exceed the actual number
of days the issuance of the patent was delayed.

(B) DISCLAIMED
TERM.— No patent the term of which has been disclaimed beyond a
specified date may be adjusted under this section beyond the
expiration date specified in the disclaimer.

(C) REDUCTION OF
PERIOD OF ADJUSTMENT.—

(i) The
period of adjustment of the term of a patent under
paragraph (1) shall be reduced by a period equal to the
period of time during which the applicant failed to engage
in reasonable efforts to conclude prosecution of the
application.

(ii) With
respect to adjustments to patent term made under the
authority of paragraph (1)(B), an applicant shall be
deemed to have failed to engage in reasonable efforts to
conclude processing or examination of an application for
the cumulative total of any periods of time in excess of 3
months that are taken to respond to a notice from the
Office making any rejection, objection, argument, or other
request, measuring such 3-month period from the date the
notice was given or mailed to the
applicant.

(iii) The
Director shall prescribe regulations establishing the
circumstances that constitute a failure of an applicant to
engage in reasonable efforts to conclude processing or
examination of an application.

(3) PROCEDURES FOR
PATENT TERM ADJUSTMENT DETERMINATION.—

(A) The Director
shall prescribe regulations establishing procedures for the
application for and determination of patent term adjustments
under this subsection.

(B) Under the
procedures established under subparagraph (A), the Director
shall—

(i) make a
determination of the period of any patent term adjustment
under this subsection, and shall transmit a notice of that
determination no later than the date of issuance of the
patent; and

(ii) provide the applicant one opportunity to request
reconsideration of any patent term adjustment
determination made by the Director.

(C) The Director
shall reinstate all or part of the cumulative period of time of
an adjustment under paragraph (2)(C) if the applicant, prior to
the issuance of the patent, makes a showing that, in spite of
all due care, the applicant was unable to respond within the
3-month period, but in no case shall more than three additional
months for each such response beyond the original 3-month period
be reinstated.

(D) The Director
shall proceed to grant the patent after completion of the
Director’s determination of a patent term adjustment under the
procedures established under this subsection, notwithstanding
any appeal taken by the applicant of such
determination.

(4) APPEAL OF PATENT
TERM ADJUSTMENT DETERMINATION.—

(A) An applicant
dissatisfied with the Director's decision on the applicant's
request for reconsideration under paragraph (3)(B)(ii) shall
have exclusive remedy by a civil action against the Director
filed in the United States District Court for the Eastern
District of Virginia within 180 days after the date of the
Director's decision on the applicant's request for
reconsideration. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change to the period
of adjustment of the patent term shall be served on the
Director, and the Director shall thereafter alter the term of
the patent to reflect such change.

(B) The
determination of a patent term adjustment under this subsection
shall not be subject to appeal or challenge by a third party
prior to the grant of the patent.

(c) CONTINUATION.—

(1) DETERMINATION.—The
term of a patent that is in force on or that results from an
application filed before the date that is 6 months after the date of
the enactment of the Uruguay Round Agreements Act shall be the greater
of the 20-year term as provided in subsection (a), or 17 years from
grant, subject to any terminal disclaimers.

(A) were
commenced or for which substantial investment was made before
the date that is 6 months after the date of the enactment of the
Uruguay Round Agreements Act; and

(B) became
infringing by reason of paragraph (1).

(3) REMUNERATION.—The
acts referred to in paragraph (2) may be continued only upon the
payment of an equitable remuneration to the patentee that is
determined in an action brought under
chapter 28
and
chapter 29 (other than those provisions
excluded by paragraph (2)).

(d) PROVISIONAL RIGHTS.—

(1) IN GENERAL.— In
addition to other rights provided by this section, a patent shall
include the right to obtain a reasonable royalty from any person who,
during the period beginning on the date of publication of the
application for such patent under
section
122(b)
, or in the case of an international
application filed under the treaty defined in
section 351(a) designating the United States
under
Article 21(2)(a)
of such treaty, the date of publication of the application, and ending
on the date the patent is issued—

(A) (i) makes,
uses, offers for sale, or sells in the United States the
invention as claimed in the published patent application or
imports such an invention into the United States;
or

(ii) if the
invention as claimed in the published patent application
is a process, uses, offers for sale, or sells in the
United States or imports into the United States products
made by that process as claimed in the published patent
application; and

(B) had actual
notice of the published patent application and, in a case in
which the right arising under this paragraph is based upon an
international application designating the United States that is
published in a language other than English, had a translation of
the international application into the English
language.

(2) RIGHT BASED ON
SUBSTANTIALLY IDENTICAL INVENTIONS.— The right under paragraph (1) to
obtain a reasonable royalty shall not be available under this
subsection unless the invention as claimed in the patent is
substantially identical to the invention as claimed in the published
patent application.

(3) TIME LIMITATION ON
OBTAINING A REASONABLE ROYALTY.— The right under paragraph (1) to
obtain a reasonable royalty shall be available only in an action
brought not later than 6 years after the patent is issued. The right
under paragraph (1) to obtain a reasonable royalty shall not be
affected by the duration of the period described in paragraph
(1).

(4) REQUIREMENTS FOR
INTERNATIONAL APPLICATIONS—

(A) EFFECTIVE
DATE.— The right under paragraph (1) to obtain a reasonable
royalty based upon the publication under the treaty defined in
section
351(a)
of an international application
designating the United States shall commence on the date of
publication under the treaty of the international application,
or, if the publication under the treaty of the international
application is in a language other than English, on the date on
which the Patent and Trademark Office receives a translation of
the publication in the English language.

(B) COPIES.— The
Director may require the applicant to provide a copy of the
international application and a translation
thereof.

[Editor Note: 35 U.S.C. 154(b)(1)(pre-AIA) as set forth below is
not applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 154(b)(1) for the
law otherwise applicable.]

*****

(b) ADJUSTMENT OF PATENT
TERM.—

(1) PATENT TERM
GUARANTEES.—

(A) GUARANTEE
OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES.— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to the failure of the Patent and Trademark
Office to—

(i) provide at least one of the notifications under
section
132
or a notice of allowance under
section
151
not later than 14 months after—

(I) the date on which an application was filed under
section 111(a);
or

(II) the date of commencement of the national stage
under
section 371 in an
international application;

(ii) respond to a reply under
section
132
, or to an appeal taken under
section
134
, within 4 months after the date
on which the reply was filed or the appeal was
taken;

(iii) act
on an application within 4 months after the date of a
decision by the Board of Patent Appeals and Interferences
under
section
134
or
135 or
a decision by a Federal court under
section
141
,
145,
or
146 in
a case in which allowable claims remain in the
application; or

(iv) issue
a patent within 4 months after the date on which the issue
fee was paid under
section
151
and all outstanding requirements
were satisfied,

the term of the patent shall be extended 1 day for
each day after the end of the period specified in clause (i),
(ii), (iii), or (iv), as the case may be, until the action
described in such clause is taken.

(B) GUARANTEE
OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to the failure of the United States Patent
and Trademark Office to issue a patent within 3 years after the
actual filing date of the application under
section
111(a)
in the United States or, in the
case of an international application, the date of commencement
of the national stage under
section 371
in the international application not including—

(i) any
time consumed by continued examination of the application
requested by the applicant under
section
132(b
);

(ii) any
time consumed by a proceeding under
section
135(a)
, any time consumed by the
imposition of an order under
section
181
, or any time consumed by
appellate review by the Board of Patent Appeals and
Interferences or by a Federal court; or

(iii) any
delay in the processing of the application by the United
States Patent and Trademark Office requested by the
applicant except as permitted by paragraph (3)(C),

the term of the patent shall be extended 1 day for
each day after the end of that 3-year period until the patent is
issued.

(C) GUARANTEE
OR ADJUSTMENTS FOR DELAYS DUE TO INTERFERENCES, SECRECY ORDERS,
AND APPEALS.— Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to—

(iii) appellate review by the Board of Patent Appeals and
Interferences or by a Federal court in a case in which the
patent was issued under a decision in the review reversing
an adverse determination of patentability,

the term of the patent shall be extended 1 day for
each day of the pendency of the proceeding, order, or review, as
the case may be.

35 U.S.C. 155A
[Repealed.]

35 U.S.C. 156
Extension of patent term.

(a) The term of a patent
which claims a product, a method of using a product, or a method of
manufacturing a product shall be extended in accordance with this section
from the original expiration date of the patent, which shall include any
patent term adjustment granted under
section 154(b)
if —

(1) the term of the
patent has not expired before an application is submitted under
subsection (d)(1) for its extension;

(2) the term of the
patent has never been extended under subsection (e)(1) of this
section;

(3) an application for
extension is submitted by the owner of record of the patent or its
agent and in accordance with the requirements of paragraphs (1)
through (4) of subsection (d);

(4) the product has
been subject to a regulatory review period before its commercial
marketing or use;

(5)

(A) except as
provided in subparagraph (B) or (C), the permission for the
commercial marketing or use of the product after such regulatory
review period is the first permitted commercial marketing or use
of the product under the provision of law under which such
regulatory review period occurred;

(B) in the case
of a patent which claims a method of manufacturing the product
which primarily uses recombinant DNA technology in the
manufacture of the product, the permission for the commercial
marketing or use of the product after such regulatory period is
the first permitted commercial marketing or use of a product
manufactured under the process claimed in the patent;
or

(C) for purposes
of subparagraph (A), in the case of a patent which
—

(i) claims
a new animal drug or a veterinary biological product which
(I) is not covered by the claims in any other patent which
has been extended, and (II) has received permission for
the commercial marketing or use in non-food-producing
animals and in food-producing animals, and

(ii) was
not extended on the basis of the regulatory review period
for use in non-food-producing animals,

the permission for the commercial marketing or use
of the drug or product after the regulatory review period for
use in food-producing animals is the first permitted commercial
marketing or use of the drug or product for administration to a
food-producing animal.

The product referred to
in paragraphs (4) and (5) is hereinafter in this section referred to as the
“approved product.”

(b) Except as provided in
subsection (d)(5)(F), the rights derived from any patent the term of which
is extended under this section shall during the period during which the term
of the patent is extended —

(1) in the case of a
patent which claims a product, be limited to any use approved for the
product —

(A) before the
expiration of the term of the patent —

(i) under
the provision of law under which the applicable regulatory
review occurred, or

(ii) under
the provision of law under which any regulatory review
described in paragraph (1), (4), or (5) of subsection (g)
occurred, and

(B) on or after
the expiration of the regulatory review period upon which the
extension of the patent was based;

(2) in the case of a
patent which claims a method of using a product, be limited to any use
claimed by the patent and approved for the product —

(A) before the
expiration of the term of the patent —

(i) under
any provision of law under which an applicable regulatory
review occurred, and

(ii) under
the provision of law under which any regulatory review
described in paragraph (1), (4), or (5) of subsection (g)
occurred, and

(B) on or after
the expiration of the regulatory review period upon which the
extension of the patent was based; and

(3) in the case of a
patent which claims a method of manufacturing a product, be limited to
the method of manufacturing as used to make —

(A) the approved
product, or

(B) the product
if it has been subject to a regulatory review period described
in paragraph (1), (4), or (5) of subsection (g).

As used in this
subsection, the term “product” includes an approved
product.

(c) The term of a patent
eligible for extension under subsection (a) shall be extended by the time
equal to the regulatory review period for the approved product which period
occurs after the date the patent is issued, except that—

(1) each period of the
regulatory review period shall be reduced by any period determined
under subsection (d)(2)(B) during which the applicant for the patent
extension did not act with due diligence during such period of the
regulatory review period;

(2) after any
reduction required by paragraph (1), the period of extension shall
include only one-half of the time remaining in the periods described
in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and
(5)(B)(i) of subsection (g);

(3) if the period
remaining in the term of a patent after the date of the approval of
the approved product under the provision of law under which such
regulatory review occurred when added to the regulatory review period
as revised under paragraphs (1) and (2) exceeds fourteen years, the
period of extension shall be reduced so that the total of both such
periods does not exceed fourteen years, and

(4) in no event shall
more than one patent be extended under subsection (e)(i) for the same
regulatory review period for any product.

(d)

(1) To obtain an
extension of the term of a patent under this section, the owner of
record of the patent or its agent shall submit an application to the
Director. Except as provided in paragraph (5), such an application may
only be submitted within the sixty-day period beginning on the date
the product received permission under the provision of law under which
the applicable regulatory review period occurred for commercial
marketing or use. The application shall contain—

(A) the identity
of the approved product and the Federal statute under which
regulatory review occurred;

(B) the identity
of the patent for which an extension is being sought and the
identity of each claim of such patent which claims the approved
product or a method of using or manufacturing the approved
product;

(C) information
to enable the Director to determine under subsections (a) and
(b) the eligibility of a patent for extension and the rights
that will be derived from the extension and information to
enable the Director and the Secretary of Health and Human
Services or the Secretary of Agriculture to determine the period
of the extension under subsection (g);

(D) a brief
description of the activities undertaken by the applicant during
the applicable regulatory review period with respect to the
approved product and the significant dates applicable to such
activities; and

(E) such patent
or other information as the Director may
require.

For purposes of determining the date on which a product
receives permission under the second sentence of this paragraph, if
such permission is transmitted after 4:30 P.M., Eastern Time, on a
business day, or is transmitted on a day that is not a business day,
the product shall be deemed to receive such permission on the next
business day. For purposes of the preceding sentence, the term
"business day" means any Monday, Tuesday, Wednesday, Thursday, or
Friday, excluding any legal holiday under section 6103 of title
5.

(2)

(A) Within 60
days of the submittal of an application for extension of the
term of a patent under paragraph (1), the Director shall notify
—

(i) the
Secretary of Agriculture if the patent claims a drug
product or a method of using or manufacturing a drug
product and the drug product is subject to the
Virus-Serum-Toxin Act, and

(ii) the
Secretary of Health and Human Services if the patent
claims any other drug product, a medical device, or a food
additive or color additive or a method of using or
manufacturing such a product, device, or additive and if
the product, device, and additive are subject to the
Federal Food, Drug and Cosmetic Act, of the extension
application and shall submit to the Secretary who is so
notified a copy of the application. Not later than 30 days
after the receipt of an application from the Director, the
Secretary reviewing the application shall review the dates
contained in the application pursuant to paragraph (1)(C)
and determine the applicable regulatory review period,
shall notify the Director of the determination, and shall
publish in the Federal Register a notice of such
determination.

(B)

(i) If a
petition is submitted to the Secretary making the
determination under subparagraph (A), not later than 180
days after the publication of the determination under
subparagraph (A), upon which it may reasonably be
determined that the applicant did not act with due
diligence during the applicable regulatory review period,
the Secretary making the determination shall, in
accordance with regulations promulgated by the Secretary,
determine if the applicant acted with due diligence during
the applicable regulatory review period. The Secretary
making the determination shall make such determination not
later than 90 days after the receipt of such a petition.
For a drug product, device, or additive subject to the
Federal Food, Drug, and Cosmetic Act or the Public Health
Service Act, the Secretary may not delegate the authority
to make the determination prescribed by this clause to an
office below the Office of the Commissioner of Food and
Drugs. For a product subject to the Virus-Serum-Toxin Act,
the Secretary of Agriculture may not delegate the
authority to make the determination prescribed by this
clause to an office below the Office of the Assistant
Secretary for Marketing and Inspection
Services.

(ii) The
Secretary making a determination under clause (i) shall
notify the Director of the determination and shall publish
in the Federal Register a notice of such determination
together with the factual and legal basis for such
determination. Any interested person may request, within
the 60-day period beginning on the publication of a
determination, the Secretary making the determination to
hold an informal hearing on the determination. If such a
request is made within such period, such Secretary shall
hold such hearing not later than 30 days after the date of
the request, or at the request of the person making the
request, not later than 60 days after such date. The
Secretary who is holding the hearing shall provide notice
of the hearing to the owner of the patent involved and to
any interested person and provide the owner and any
interested person an opportunity to participate in the
hearing. Within 30 days after the completion of the
hearing, such Secretary shall affirm or revise the
determination which was the subject of the hearing and
notify the Director of any revision of the determination
and shall publish any such revision in the Federal
Register.

(3) For the purposes
of paragraph (2)(B), the term “due diligence” means that degree of
attention, continuous directed effort, and timeliness as may
reasonably be expected from, and are ordinarily exercised by, a person
during a regulatory review period.

(4) An application for
the extension of the term of a patent is subject to the disclosure
requirements prescribed by the Director.

(5)

(A) If the
owner of record of the patent or its agent reasonably expects
that the applicable regulatory review period described in
paragraphs (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or
(5)(B)(ii) of subsection (g) that began for a product that is
the subject of such patent may extend beyond the expiration of
the patent term in effect, the owner or its agent may submit an
application to the Director for an interim extension during the
period beginning 6 months, and ending 15 days before such term
is due to expire. The application shall contain—

(i) the
identity of the product subject to regulating review and
the Federal statute under which such review is
occurring;

(ii) the
identity of the patent for which interim extension is
being sought and the identity of each claim of such patent
which claims the product under regulatory review or a
method of using or manufacturing the
product;

(iii) information to enable the Director to determine under
subsection (a)(1), (2), and (3) the eligibility of a
patent for extension;

(iv) a
brief description of the activities undertaken by the
applicant during the applicable regulatory review period
to date with respect to the product under review and the
significant dates applicable to such activities;
and

(v) such
patent or other information as the Director may
require.

(B) If the
Director determines that, except for permission to market or use
the product commercially, the patent would be eligible for an
extension of the patent term under this section, the Director
shall publish in the Federal Register a notice of such
determination, including the identity of the product under
regulatory review, and shall issue to the applicant a
certificate of interim extension for a period of not more than 1
year.

(C) The owner of
record of a patent, or its agent, for which an interim extension
has been granted under subparagraph (B), may apply for not more
than 4 subsequent interim extensions under this paragraph,
except that, in the case of a patent subject to subsection
(g)(6)(C), the owner of record of the patent, or its agent, may
apply for only 1 subsequent interim extension under this
paragraph. Each such subsequent application shall be made during
the period beginning 60 days before, and ending 30 days before,
the expiration of the preceding interim
extension.

(D) Each
certificate of interim extension under this paragraph shall be
recorded in the official file of the patent and shall be
considered part of the original patent.

(E) Any interim
extension granted under this paragraph shall terminate at the
end of the 60-day period beginning on the day on which the
product involved receives permission for commercial marketing or
use, except that, if within that 60-day period, the applicant
notifies the Director of such permission and submits any
additional information under paragraph (1) of this subsection
not previously contained in the application for interim
extension, the patent shall be further extended, in accordance
with the provisions of this section—

(i) for
not to exceed 5 years from the date of expiration of the
original patent term; or

(ii) if the
patent is subject to subsection (g)(6)(C), from the date
on which the product involved receives approval for
commercial marketing or use.

(F) The rights
derived from any patent the term of which is extended under this
paragraph shall, during the period of interim
extension—

(i) in the
case of a patent which claims a product, be limited to any
use then under regulatory review;

(ii) in the
case of a patent which claims a method of using a product,
be limited to any use claimed by the patent then under
regulatory review; and

(iii) in the
case of a patent which claims a method of manufacturing a
product, be limited to the method of manufacturing as used
to make the product then under regulatory
review.

(e)

(1) A determination
that a patent is eligible for extension may be made by the Director
solely on the basis of the representations contained in the
application for the extension. If the Director determines that a
patent is eligible for extension under subsection (a) and that the
requirements of paragraphs (1) through (4) of subsection (d) have been
complied with, the Director shall issue to the applicant for the
extension of the term of the patent a certificate of extension, under
seal, for the period prescribed by subsection (c). Such certificate
shall be recorded in the official file of the patent and shall be
considered as part of the original patent.

(2) If the term of a
patent for which an application has been submitted under subsection
(d)(1) would expire before a certificate of extension is issued or
denied under paragraph (1) respecting the application, the Director
shall extend, until such determination is made, the term of the patent
for periods of up to one year if he determines that the patent is
eligible for extension.

(f) For purposes of this
section:

(1) The term “product”
means:

(A) A drug
product.

(B) Any medical
device, food additive, or color additive subject to regulation
under the Federal Food, Drug, and Cosmetic Act.

(2) The term “drug
product” means the active ingredient of—

(A) a new drug,
antibiotic drug, or human biological product (as those terms are
used in the Federal Food, Drug, and Cosmetic Act and the Public
Health Service Act), or

(B) a new animal
drug or veterinary biological product (as those terms are used
in the Federal Food, Drug, and Cosmetic Act and the
Virus-Serum-Toxin Act) which is not primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma technology, or other
processes involving site specific genetic manipulation
techniques

including any salt or ester of the active ingredient, as a
single entity or in combination with another active
ingredient.

(3) The term “major
health or environmental effects test” means a test which is reasonably
related to the evaluation of the health or environmental effects of a
product, which requires at least six months to conduct, and the data
from which is submitted to receive permission for commercial marketing
or use. Periods of analysis or evaluation of test results are not to
be included in determining if the conduct of a test required at least
six months.

(4)

(A) Any
reference to section 351 is a reference to section 351 of the
Public Health Service Act.

(B) Any
reference to section 503, 505, 512, or 515 is a reference to
section 503, 505, 512, or 515 of the Federal Food, Drug and
Cosmetic Act.

(C) Any
reference to the Virus-Serum-Toxin Act is a reference to the Act
of March 4, 1913 (21 U.S.C. 151 - 158).

(5) The term “informal
hearing” has the meaning prescribed for such term by section 201(y) of
the Federal Food, Drug and Cosmetic Act.

(6) The term “patent”
means a patent issued by the United States Patent and Trademark
Office.

(7) The term “date of
enactment” as used in this section means September 24, 1984, for human
drug product, a medical device, food additive, or color
additive.

(8) The term “date of
enactment” as used in this section means the date of enactment of the
Generic Animal Drug and Patent Term Restoration Act for an animal drug
or a veterinary biological product.

(g) For purposes of this
section, the term “regulatory review period” has the following
meanings:

(1)

(A) In the case
of a product which is a new drug, antibiotic drug, or human
biological product, the term means the period described in
subparagraph (B) to which the limitation described in paragraph
(6) applies.

(B) The
regulatory review period for a new drug, antibiotic drug, or
human biological product is the sum of —

(i) the
period beginning on the date an exemption under subsection
(i) of section 505 or subsection (d) of section 507 became
effective for the approved product and ending on the date
an application was initially submitted for such drug
product under section 351, 505, or 507,
and

(ii) the
period beginning on the date the application was initially
submitted for the approved product under section 351,
subsection (b) of section 505, or section 507 and ending
on the date such application was approved under such
section.

(2)

(A) In the case
of a product which is a food additive or color additive, the
term means the period described in subparagraph (B) to which the
limitation described in paragraph (6) applies.

(B) The
regulatory review period for a food or color additive is the sum
of —

(i) the
period beginning on the date a major health or
environmental effects test on the additive was initiated
and ending on the date a petition was initially submitted
with respect to the product under the Federal Food, Drug,
and Cosmetic Act requesting the issuance of a regulation
for use of the product, and

(ii) the
period beginning on the date a petition was initially
submitted with respect to the product under the Federal
Food, Drug, and Cosmetic Act requesting the issuance of a
regulation for use of the product, and ending on the date
such regulation became effective or, if objections were
filed to such regulation, ending on the date such
objections were resolved and commercial marketing was
permitted or, if commercial marketing was permitted and
later revoked pending further proceedings as a result of
such objections, ending on the date such proceedings were
finally resolved and commercial marketing was
permitted.

(3)

(A) In the case
of a product which is a medical device, the term means the
period described in subparagraph (B) to which the limitation
described in paragraph (6) applies.

(B) The
regulatory review period for a medical device is the sum of
—

(i) the
period beginning on the date a clinical investigation on
humans involving the device was begun and ending on the
date an application was initially submitted with respect
to the device under section 515, and

(ii) the
period beginning on the date an application was initially
submitted with respect to the device under section 515 and
ending on the date such application was approved under
such Act or the period beginning on the date a notice of
completion of a product development protocol was initially
submitted under section 515(f)(5) and ending on the date
the protocol was declared completed under section
515(f)(6).

(4)

(A) In the case
of a product which is a new animal drug, the term means the
period described in subparagraph (B) to which the limitation
described in paragraph (6) applies.

(B) The
regulatory review period for a new animal drug product is the
sum of —

(i) the
period beginning on the earlier of the date a major health
or environmental effects test on the drug was initiated or
the date an exemption under subsection (j) of section 512
became effective for the approved new animal drug product
and ending on the date an application was initially
submitted for such animal drug product under section 512,
and

(ii) the
period beginning on the date the application was initially
submitted for the approved animal drug product under
subsection (b) of section 512 and ending on the date such
application was approved under such
section.

(5)

(A) In the case
of a product which is a veterinary biological product, the term
means the period described in subparagraph (B) to which the
limitation described in paragraph (6) applies.

(B) The
regulatory period for a veterinary biological product is the sum
of —

(i) the
period beginning on the date the authority to prepare an
experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an
application for a license was submitted under the
Virus-Serum-Toxin Act, and

(ii) the
period beginning on the date an application for a license
was initially submitted for approval under the
Virus-Serum-Toxin Act and ending on the date such license
was issued.

(6) A period
determined under any of the preceding paragraphs is subject to the
following limitations:

(A) If the
patent involved was issued after the date of the enactment of
this section, the period of extension determined on the basis of
the regulatory review period determined under any such paragraph
may not exceed five years.

(B) If the
patent involved was issued before the date of the enactment of
this section and —

(i) no
request for an exemption described in paragraph (1)(B) or
(4)(B) was submitted and no request for the authority
described in paragraph (5)(B) was
submitted,

(ii) no
major health or environment effects test described in
paragraph (2)(B) or (4)(B) was initiated and no petition
for a regulation or application for registration described
in such paragraph was submitted, or

(iii) no
clinical investigation described in paragraph (3) was
begun or product development protocol described in such
paragraph was submitted, before such date for the approved
product the period of extension determined on the basis of
the regulatory review period determined under any such
paragraph may not exceed five years.

(C) If the
patent involved was issued before the date of the enactment of
this section and if an action described in subparagraph (B) was
taken before the date of enactment of this section with respect
to the approved product and the commercial marketing or use of
the product has not been approved before such date, the period
of extension determined on the basis of the regulatory review
period determined under such paragraph may not exceed two years
or in the case of an approved product which is a new animal drug
or veterinary biological product (as those terms are used in the
Federal Food, Drug, and Cosmetic Act or the Virus-Serum-Toxin
Act), three years.

(h) The Director may
establish such fees as the Director determines appropriate to cover the
costs to the Office of receiving and acting upon applications under this
section.

35 U.S.C. 157
[Repealed.]

35 U.S.C. 157 (pre-AIA)
Statutory invention registration.

[Editor Note:
Not applicable to requests for
statutory invention registrations filed on or after March 16, 2013. 35 U.S.C. 157
repealed with regard to such requests.]

(a) Notwithstanding any
other provision, the Director is authorized to publish a statutory invention
registration containing the specification and drawings of a regularly filed
application for a patent without examination if the applicant
—

(2) has complied with
the requirements for printing, as set forth in regulations of the
Director;

(3) waives the right
to receive a patent on the invention within such period as may be
prescribed by the Director; and

(4) pays application,
publication, and other processing fees established by the
Director.

If an interference
is declared with respect to such an application, a statutory invention
registration may not be published unless the issue of priority of
invention is finally determined in favor of the
applicant.

(b) The waiver under
subsection (a)(3) of this section by an applicant shall take effect upon
publication of the statutory invention registration.

(c) A statutory invention
registration published pursuant to this section shall have all of the
attributes specified for patents in this title except those specified in
section 183 and
sections 271 through
289. A statutory
invention registration shall not have any of the attributes specified for
patents in any other provision of law other than this title. A statutory
invention registration published pursuant to this section shall give
appropriate notice to the public, pursuant to regulations which the Director
shall issue, of the preceding provisions of this subsection. The invention
with respect to which a statutory invention certificate is published is not
a patented invention for purposes of
section
292
.

(d) The Director shall
report to the Congress annually on the use of statutory invention
registrations. Such report shall include an assessment of the degree to
which agencies of the federal government are making use of the statutory
invention registration system, the degree to which it aids the management of
federally developed technology, and an assessment of the cost savings to the
Federal Government of the uses of such procedures.

CHAPTER 15 - PLANT PATENTS

161 Patents for plants.

162 Description, claim.

163 Grant.

164 Assistance of the Department of
Agriculture.

35 U.S.C. 161
Patents for plants.

Whoever invents or discovers and
asexually reproduces any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated
plant or a plant found in an uncultivated state, may obtain a patent therefor,
subject to the conditions and requirements of this title.

The provisions of this title
relating to patents for inventions shall apply to patents for plants, except as
otherwise provided.

35 U.S.C. 163
Grant.

In the case of a plant patent,
the grant shall include the right to exclude others from asexually reproducing the
plant, and from using, offering for sale, or selling the plant so reproduced, or any
of its parts, throughout the United States, or from importing the plant so
reproduced, or any parts thereof, into the United States.

35 U.S.C. 164
Assistance of the Department of Agriculture.

The President may by Executive
order direct the Secretary of Agriculture, in accordance with the requests of the
Director, for the purpose of carrying into effect the provisions of this title with
respect to plants (1) to furnish available information of the Department of
Agriculture, (2) to conduct through the appropriate bureau or division of the
Department research upon special problems, or (3) to detail to the Director officers
and employees of the Department.

The right of priority provided
for by subsections (a) through (d) of
section 119 shall be six months
in the case of designs. The right of priority provided for by
section 119(e)
shall not apply to designs.

35 U.S.C. 172 (pre-AIA)
Right of priority.

[Editor Note:
Not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
). See
35 U.S.C. 172
for the law otherwise applicable.]

The right of priority provided
for by subsections (a) through (d) of
section 119 and
the time specified in
section 102(d) shall be six
months in the case of designs. The right of priority provided for by
section 119(e) shall not apply to designs.

Whenever publication or
disclosure by the publication of an application or by the grant of a patent on an
invention in which the Government has a property interest might, in the opinion of
the head of the interested Government agency, be detrimental to the national
security, the Commissioner of Patents upon being so notified shall order that the
invention be kept secret and shall withhold the publication of an application or the
grant of a patent therefor under the conditions set forth
hereinafter.

Whenever the publication or
disclosure of an invention by the publication of an application or by the granting of
a patent, in which the Government does not have a property interest, might, in the
opinion of the Commissioner of Patents, be detrimental to the national security, he
shall make the application for patent in which such invention is disclosed available
for inspection to the Atomic Energy Commission, the Secretary of Defense, and the
chief officer of any other department or agency of the Government designated by the
President as a defense agency of the United States.

Each individual to whom the
application is disclosed shall sign a dated acknowledgment thereof, which
acknowledgment shall be entered in the file of the application. If, in the opinion of
the Atomic Energy Commission, the Secretary of a Defense Department, or the chief
officer of another department or agency so designated, the publication or disclosure
of the invention by the publication of an application or by the granting of a patent
therefor would be detrimental to the national security, the Atomic Energy Commission,
the Secretary of a Defense Department, or such other chief officer shall notify the
Commissioner of Patents and the Commissioner of Patents shall order that the
invention be kept secret and shall withhold the publication of the application or the
grant of a patent for such period as the national interest requires, and notify the
applicant thereof. Upon proper showing by the head of the department or agency who
caused the secrecy order to be issued that the examination of the application might
jeopardize the national interest, the Commissioner of Patents shall thereupon
maintain the application in a sealed condition and notify the applicant thereof. The
owner of an application which has been placed under a secrecy order shall have a
right to appeal from the order to the Secretary of Commerce under rules prescribed by
him.

An invention shall not be ordered
kept secret and the publication of an application or the grant of a patent withheld
for a period of more than one year. The Commissioner of Patents shall renew the order
at the end thereof, or at the end of any renewal period, for additional periods of
one year upon notification by the head of the department or the chief officer of the
agency who caused the order to be issued that an affirmative determination has been
made that the national interest continues to so require. An order in effect, or
issued, during a time when the United States is at war, shall remain in effect for
the duration of hostilities and one year following cessation of hostilities. An order
in effect, or issued, during a national emergency declared by the President shall
remain in effect for the duration of the national emergency and six months
thereafter. The Commissioner of Patents may rescind any order upon notification by
the heads of the departments and the chief officers of the agencies who caused the
order to be issued that the publication or disclosure of the invention is no longer
deemed detrimental to the national security.

35 U.S.C. 182
Abandonment of invention for unauthorized
disclosure.

The invention disclosed in an
application for patent subject to an order made pursuant to
section
181
may be held abandoned upon its being established by the
Commissioner of Patents that in violation of said order the invention has been
published or disclosed or that an application for a patent therefor has been filed in
a foreign country by the inventor, his successors, assigns, or legal representatives,
or anyone in privity with him or them, without the consent of the Commissioner of
Patents. The abandonment shall be held to have occurred as of the time of violation.
The consent of the Commissioner of Patents shall not be given without the concurrence
of the heads of the departments and the chief officers of the agencies who caused the
order to be issued. A holding of abandonment shall constitute forfeiture by the
applicant, his successors, assigns, or legal representatives, or anyone in privity
with him or them, of all claims against the United States based upon such
invention.

35 U.S.C. 183
Right to compensation.

An applicant, his successors,
assigns, or legal representatives, whose patent is withheld as herein provided, shall
have the right, beginning at the date the applicant is notified that, except for such
order, his application is otherwise in condition for allowance, or February 1, 1952,
whichever is later, and ending six years after a patent is issued thereon, to apply
to the head of any department or agency who caused the order to be issued for
compensation for the damage caused by the order of secrecy and/or for the use of the
invention by the Government, resulting from his disclosure. The right to compensation
for use shall begin on the date of the first use of the invention by the Government.
The head of the department or agency is authorized, upon the presentation of a claim,
to enter into an agreement with the applicant, his successors, assigns, or legal
representatives, in full settlement for the damage and/or use. This settlement
agreement shall be conclusive for all purposes notwithstanding any other provision of
law to the contrary. If full settlement of the claim cannot be effected, the head of
the department or agency may award and pay to such applicant, his successors,
assigns, or legal representatives, a sum not exceeding 75 per centum of the sum which
the head of the department or agency considers just compensation for the damage
and/or use. A claimant may bring suit against the United States in the United States
Court of Federal Claims or in the District Court of the United States for the
district in which such claimant is a resident for an amount which when added to the
award shall constitute just compensation for the damage and/or use of the invention
by the Government. The owner of any patent issued upon an application that was
subject to a secrecy order issued pursuant to
section 181, who
did not apply for compensation as above provided, shall have the right, after the
date of issuance of such patent, to bring suit in the United States Court of Federal
Claims for just compensation for the damage caused by reason of the order of secrecy
and/or use by the Government of the invention resulting from his disclosure. The
right to compensation for use shall begin on the date of the first use of the
invention by the Government. In a suit under the provisions of this section the
United States may avail itself of all defenses it may plead in an action under
section 1498 of title 28. This section shall not confer a right of action on anyone
or his successors, assigns, or legal representatives who, while in the full-time
employment or service of the United States, discovered, invented, or developed the
invention on which the claim is based.

35 U.S.C. 184
Filing of application in foreign country.

[Editor Note: Applicable to proceedings commenced on or after
Sept. 16, 2012. See
35 U.S.C. 184 (pre-AIA) for
the law otherwise applicable.]

(a) FILING IN FOREIGN COUNTRY.—Except
when authorized by a license obtained from the Commissioner of Patents a
person shall not file or cause or authorize to be filed in any foreign
country prior to six months after filing in the United States an
application for patent or for the registration of a utility model,
industrial design, or model in respect of an invention made in this
country. A license shall not be granted with respect to an invention
subject to an order issued by the Commissioner of Patents pursuant to
section 181 without the
concurrence of the head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may be granted
retroactively where an application has been filed abroad through error
and the application does not disclose an invention within the scope of
section
181
.

(b) APPLICATION.—The term
“application” when used in this chapter includes applications and any
modifications, amendments, or supplements thereto, or divisions
thereof.

(c) SUBSEQUENT MODIFICATIONS,
AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit
subsequent modifications, amendments, and supplements containing
additional subject matter if the application upon which the request for
the license is based is not, or was not, required to be made available
for inspection under
section
181
and if such modifications, amendments, and
supplements do not change the general nature of the invention in a manner
which would require such application to be made available for inspection
under such
section
181
. In any case in which a license is not, or was
not, required in order to file an application in any foreign country,
such subsequent modifications, amendments, and supplements may be made,
without a license, to the application filed in the foreign country if the
United States application was not required to be made available for
inspection under
section
181
and if such modifications, amendments, and
supplements do not, or did not, change the general nature of the
invention in a manner which would require the United States application
to have been made available for inspection under such
section
181
.

35 U.S.C. 184 (pre-AIA)
Filing of application in foreign country.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
184
for the law otherwise
applicable.]

Except when authorized by a
license obtained from the Commissioner of Patents a person shall not file or cause or
authorize to be filed in any foreign country prior to six months after filing in the
United States an application for patent or for the registration of a utility model,
industrial design, or model in respect of an invention made in this country. A
license shall not be granted with respect to an invention subject to an order issued
by the Commissioner of Patents pursuant to
section 181 of
this title without the concurrence of the head of the departments and the chief
officers of the agencies who caused the order to be issued. The license may be
granted retroactively where an application has been filed abroad through error and
without deceptive intent and the application does not disclose an invention within
the scope of
section 181 of this
title.

The term “application” when used
in this chapter includes applications and any modifications, amendments, or
supplements thereto, or divisions thereof.

The scope of a license shall
permit subsequent modifications, amendments, and supplements containing additional
subject matter if the application upon which the request for the license is based is
not, or was not, required to be made available for inspection under
section
181
of this title and if such modifications, amendments, and
supplements do not change the general nature of the invention in a manner which would
require such application to be made available for inspection under such
section 181. In any case in which a license is not, or was
not, required in order to file an application in any foreign country, such subsequent
modifications, amendments, and supplements may be made, without a license, to the
application filed in the foreign country if the United States application was not
required to be made available for inspection under
section
181
and if such modifications, amendments, and supplements do
not, or did not, change the general nature of the invention in a manner which would
require the United States application to have been made available for inspection
under such
section 181.

35 U.S.C. 185
Patent barred for filing without license.

[Editor Note: Applicable to proceedings commenced on or after
Sept. 16, 2012. See
35 U.S.C. 185 (pre-AIA) for
the law otherwise applicable.]

Notwithstanding any other
provisions of law any person, and his successors, assigns, or legal representatives,
shall not receive a United States patent for an invention if that person, or his
successors, assigns, or legal representatives shall, without procuring the license
prescribed in
section 184, have made, or consented to or assisted another’s
making, application in a foreign country for a patent or for the registration of a
utility model, industrial design, or model in respect of the invention. A United
States patent issued to such person, his successors, assigns, or legal
representatives shall be invalid, unless the failure to procure such license was
through error, and the patent does not disclose subject matter within the scope of
section
181
.

35 U.S.C. 185 (pre-AIA)
Patent barred for filing without license.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
185
for the law otherwise
applicable.]

Notwithstanding any other
provisions of law any person, and his successors, assigns, or legal representatives,
shall not receive a United States patent for an invention if that person, or his
successors, assigns, or legal representatives shall, without procuring the license
prescribed in
section 184 of this title, have
made, or consented to or assisted another’s making, application in a foreign country
for a patent or for the registration of a utility model, industrial design, or model
in respect of the invention. A United States patent issued to such person, his
successors, assigns, or legal representatives shall be invalid, unless the failure to
procure such license was through error and without deceptive intent, and the patent
does not disclose subject matter within the scope of
section
181
of this title.

35 U.S.C. 186
Penalty.

Whoever, during the period or
periods of time an invention has been ordered to be kept secret and the grant of a
patent thereon withheld pursuant to
section 181,
shall, with knowledge of such order and without due authorization, willfully publish
or disclose or authorize or cause to be published or disclosed the invention, or
material information with respect thereto, or whoever willfully, in violation of the
provisions of
section 184, shall file or cause
or authorize to be filed in any foreign country an application for patent or for the
registration of a utility model, industrial design, or model in respect of any
invention made in the United States, shall, upon conviction, be fined not more than
$10,000 or imprisoned for not more than two years, or both.

35 U.S.C. 187
Nonapplicability to certain persons.

The prohibitions and penalties of
this chapter shall not apply to any officer or agent of the United States acting
within the scope of his authority, nor to any person acting upon his written
instructions or permission.

35 U.S.C. 188
Rules and regulations, delegation of power.

The Atomic Energy Commission, the
Secretary of a defense department, the chief officer of any other department or
agency of the Government designated by the President as a defense agency of the
United States, and the Secretary of Commerce, may separately issue rules and
regulations to enable the respective department or agency to carry out the provisions
of this chapter, and may delegate any power conferred by this
chapter.

35 U.S.C. 200
Policy and objective.

It is the policy and objective of
the Congress to use the patent system to promote the utilization of inventions
arising from federally supported research or development; to encourage maximum
participation of small business firms in federally supported research and development
efforts; to promote collaboration between commercial concerns and nonprofit
organizations, including universities; to ensure that inventions made by nonprofit
organizations and small business firms are used in a manner to promote free
competition and enterprise without unduly encumbering future research and discovery;
to promote the commercialization and public availability of inventions made in the
United States by United States industry and labor; to ensure that the Government
obtains sufficient rights in federally supported inventions to meet the needs of the
Government and protect the public against nonuse or unreasonable use of inventions;
and to minimize the costs of administering policies in this area.

35 U.S.C. 201
Definitions.

As used in this chapter
—

(a) The term “Federal
agency” means any executive agency as defined in section 105 of title 5, and
the military departments as defined by section 102 of title
5.

(b) The term “funding
agreement” means any contract, grant, or cooperative agreement entered into
between any Federal agency, other than the Tennessee Valley Authority, and
any contractor for the performance of experimental, developmental, or
research work funded in whole or in part by the Federal Government. Such
term includes any assignment, substitution of parties, or subcontract of any
type entered into for the performance of experimental, developmental, or
research work under a funding agreement as herein defined.

(c) The term “contractor”
means any person, small business firm, or nonprofit organization that is a
party to a funding agreement.

(d) The term “invention”
means any invention or discovery which is or may be patentable or otherwise
protectable under this title or any novel variety of plant which is or may
be protectable under the Plant Variety Protection Act (7 U.S.C. 2321, et
seq.).

(e) The term “subject
invention” means any invention of the contractor conceived or first actually
reduced to practice in the performance of work under a funding agreement:
Provided, That in the case of a
variety of plant, the date of determination (as defined in section 41(d) of
the Plant Variety Protection Act (7 U.S.C. 2401(d)) must also occur during
the period of contract performance.

(f) The term “practical
application” means to manufacture in the case of a composition or product,
to practice in the case of a process or method, or to operate in the case of
a machine or system; and, in each case, under such conditions as to
establish that the invention is being utilized and that its benefits are to
the extent permitted by law or Government regulations available to the
public on reasonable terms.

(g) The term “made” when
used in relation to any invention means the conception or first actual
reduction to practice of such invention.

(h) The term “small business
firm” means a small business concern as defined at section 2 of Public Law
85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of
the Small Business Administration.

(i) The term “nonprofit
organization” means universities and other institutions of higher education
or an organization of the type described in section 501(c)(3) of the
Internal Revenue Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation
under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any
nonprofit scientific or educational organization qualified under a State
nonprofit organization statute.

(a) Each nonprofit
organization or small business firm may, within a reasonable time after
disclosure as required by paragraph (c)(1) of this section, elect to retain
title to any subject invention:
Provided,
however,
That a funding agreement may provide otherwise (i)
when the contractor is not located in the United States or does not have a
place of business located in the United States or is subject to the control
of a foreign government, (ii) in exceptional circumstances when it is
determined by the agency that restriction or elimination of the right to
retain title to any subject invention will better promote the policy and
objectives of this chapter, (iii) when it is determined by a Government
authority which is authorized by statute or Executive order to conduct
foreign intelligence or counterintelligence activities that the restriction
or elimination of the right to retain title to any subject invention is
necessary to protect the security of such activities, or (iv) when the
funding agreement includes the operation of a Government-owned,
contractor-operated facility of the Department of Energy primarily dedicated
to that Department’s naval nuclear propulsion or weapons related programs
and all funding agreement limitations under this subparagraph on the
contractor’s right to elect title to a subject invention are limited to
inventions occurring under the above two programs of the Department of
Energy. The rights of the nonprofit organization or small business firm
shall be subject to the provisions of paragraph (c) of this section and the
other provisions of this chapter.

(b)

(1) The rights of the
Government under subsection (a) shall not be exercised by a Federal
agency unless it first determines that at least one of the conditions
identified in clauses (i) through (iii) of subsection (a) exists.
Except in the case of subsection (a)(iii), the agency shall file with
the Secretary of Commerce, within thirty days after the award of the
applicable funding agreement, a copy of such determination. In the
case of a determination under subsection (a)(ii), the statement shall
include an analysis justifying the determination. In the case of
determinations applicable to funding agreements with small business
firms, copies shall also be sent to the Chief Counsel for Advocacy of
the Small Business Administration. If the Secretary of Commerce
believes that any individual determination or pattern of
determinations is contrary to the policies and objectives of this
chapter or otherwise not in conformance with this chapter, the
Secretary shall so advise the head of the agency concerned and the
Administrator of the Office of Federal Procurement Policy, and
recommend corrective actions.

(2) Whenever the
Administrator of the Office of Federal Procurement Policy has
determined that one or more Federal agencies are utilizing the
authority of clause (i) or (ii) of subsection (a) of this section in a
manner that is contrary to the policies and objectives of this chapter
the Administrator is authorized to issue regulations describing
classes of situations in which agencies may not exercise the
authorities of those clauses.

(3) If the contractor
believes that a determination is contrary to the policies and
objectives of this chapter or constitutes an abuse of discretion by
the agency, the determination shall be subject to
section 203(b).

(c) Each funding agreement
with a small business firm or nonprofit organization shall contain
appropriate provisions to effectuate the following:

(1) That the
contractor disclose each subject invention to the Federal agency
within a reasonable time after it becomes known to contractor
personnel responsible for the administration of patent matters, and
that the Federal Government may receive title to any subject invention
not disclosed to it within such time.

(2) That the
contractor make a written election within two years after disclosure
to the Federal agency (or such additional time as may be approved by
the Federal agency) whether the contractor will retain title to a
subject invention:
Provided,
That in any case where the 1-year period referred to in section
102(b) would end
before the end of that 2-year period, the period for election may be
shortened by the Federal agency to a date that is not more than sixty
days before the end of that 1-year period: And
provided further, That the Federal
Government may receive title to any subject invention in which the
contractor does not elect to retain rights or fails to elect rights
within such times.

(3) That a
contractor electing rights in a subject invention agrees to file a
patent application prior to the expiration of the 1-year period
referred to in section
102(b), and shall
thereafter file corresponding patent applications in other countries
in which it wishes to retain title within reasonable times, and that
the Federal Government may receive title to any subject inventions in
the United States or other countries in which the contractor has not
filed patent applications on the subject invention within such
times.

(4) With respect to
any invention in which the contractor elects rights, the Federal
agency shall have a nonexclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced for or on behalf of the
United States any subject invention throughout the world:
Provided, That the funding agreement may
provide for such additional rights, including the right to assign or
have assigned foreign patent rights in the subject invention, as are
determined by the agency as necessary for meeting the obligations of
the United States under any treaty, international agreement,
arrangement of cooperation, memorandum of understanding, or similar
arrangement, including military agreements relating to weapons
development and production.

(5) The right of the
Federal agency to require periodic reporting on the utilization or
efforts at obtaining utilization that are being made by the contractor
or his licensees or assignees:
Provided, That any such information, as well as any
information on utilization or efforts at obtaining utilization
obtained as part of a proceeding under
section 203 of this chapter shall be treated by
the Federal agency as commercial and financial information obtained
from a person and privileged and confidential and not subject to
disclosure under section 552 of title 5.

(6) An obligation on
the part of the contractor, in the event a United States patent
application is filed by or on its behalf or by any assignee of the
contractor, to include within the specification of such application
and any patent issuing thereon, a statement specifying that the
invention was made with Government support and that the Government has
certain rights in the invention.

(7) In the case of a
nonprofit organization, (A) a prohibition upon the assignment of
rights to a subject invention in the United States without the
approval of the Federal agency, except where such assignment is made
to an organization which has as one of its primary functions the
management of inventions (provided that such assignee shall be subject
to the same provisions as the contractor); (B) a requirement that the
contractor share royalties with the inventor; (C) except with respect
to a funding agreement for the operation of a
Government-owned-contractor-operated facility, a requirement that the
balance of any royalties or income earned by the contractor with
respect to subject inventions, after payment of expenses (including
payments to inventors) incidental to the administration of subject
inventions, be utilized for the support of scientific research, or
education; (D) a requirement that, except where it is determined to be
infeasible following a reasonable inquiry, a preference in the
licensing of subject inventions shall be given to small business
firms; and (E) with respect to a funding agreement for the operation
of a Government-owned-contractor-operator facility, requirements (i)
that after payment of patenting costs, licensing costs, payments to
inventors, and other expenses incidental to the administration of
subject inventions, 100 percent of the balance of any royalties or
income earned and retained by the contractor during any fiscal year,
up to an amount equal to 5 percent of the annual budget of the
facility, shall be used by the contractor for scientific research,
development, and education consistent with the research and
development mission and objectives of the facility, including
activities that increase the licensing potential of other inventions
of the facility provided that if said balance exceeds 5 percent of the
annual budget of the facility, that 15 percent of such excess shall be
paid to the Treasury of the United States and the remaining 85 percent
shall be used for the same purposes described above in this clause;
and (ii) that, to the extent it provides the most effective technology
transfer, the licensing of subject inventions shall be administered by
contractor employees on location at the facility.

(d) If a contractor does not
elect to retain title to a subject invention in cases subject to this
section, the Federal agency may consider and after consultation with the
contractor grant requests for retention of rights by the inventor subject to
the provisions of this Act and regulations promulgated
hereunder.

(e) In any case when a
Federal employee is a coinventor of any invention made with a nonprofit
organization, a small business firm, or a non-Federal inventor, the Federal
agency employing such coinventor may, for the purpose of consolidating
rights in the invention and if it finds that it would expedite the
development of the invention—

(1) license or assign
whatever rights it may acquire in the subject invention to the
nonprofit organization, small business firm, or non-Federal inventor
in accordance with the provisions of this chapter; or

(2) acquire any rights
in the subject invention from the nonprofit organization, small
business firm, or non-Federal inventor, but only to the extent the
party from whom the rights are acquired voluntarily enters into the
transaction and no other transaction under this chapter is conditioned
on such acquisition.

(f)

(1) No funding
agreement with a small business firm or nonprofit organization shall
contain a provision allowing a Federal agency to require the licensing
to third parties of inventions owned by the contractor that are not
subject inventions unless such provision has been approved by the head
of the agency and a written justification has been signed by the head
of the agency. Any such provision shall clearly state whether the
licensing may be required in connection with the practice of a subject
invention, a specifically identified work object, or both. The head of
the agency may not delegate the authority to approve provisions or
sign justifications required by this paragraph.

(2) A Federal agency
shall not require the licensing of third parties under any such
provision unless the head of the agency determines that the use of the
invention by others is necessary for the practice of a subject
invention or for the use of a work object of the funding agreement and
that such action is necessary to achieve the practical application of
the subject invention or work object. Any such determination shall be
on the record after an opportunity for an agency hearing. Any action
commenced for judicial review of such determination shall be brought
within sixty days after notification of such
determination.

35 U.S.C. 202 (pre-AIA)
Disposition of rights.

[Editor Note: Pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set
forth below are
not applicable to patent applications subject to the
first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 202(c)(2) and (c)(3)
for the law otherwise applicable.]

*****

(c) Each funding agreement
with a small business firm or nonprofit organization shall contain
appropriate provisions to effectuate the following:

***

(2) That the
contractor make a written election within two years after disclosure
to the Federal agency (or such additional time as may be approved by
the Federal agency) whether the contractor will retain title to a
subject invention:
Provided ,
That in any case where publication, on sale, or public use, has
initiated the one year statutory period in which valid patent
protection can still be obtained in the United States, the period for
election may be shortened by the Federal agency to a date that is not
more than sixty days prior to the end of the statutory period: And
provided further , That the
Federal Government may receive title to any subject invention in which
the contractor does not elect to retain rights or fails to elect
rights within such times.

(3) That a contractor
electing rights in a subject invention agrees to file a patent
application prior to any statutory bar date that may occur under this
title due to publication, on sale, or public use, and shall thereafter
file corresponding patent applications in other countries in which it
wishes to retain title within reasonable times, and that the Federal
Government may receive title to any subject inventions in the United
States or other countries in which the contractor has not filed patent
applications on the subject invention within such
times.

35 U.S.C. 203
March-in rights.

(a) With respect to any
subject invention in which a small business firm or nonprofit organization
has acquired title under this chapter, the Federal agency under whose
funding agreement the subject invention was made shall have the right, in
accordance with such procedures as are provided in regulations promulgated
hereunder, to require the contractor, an assignee, or exclusive licensee of
a subject invention to grant a nonexclusive, partially exclusive, or
exclusive license in any field of use to a responsible applicant or
applicants, upon terms that are reasonable under the circumstances, and if
the contractor, assignee, or exclusive licensee refuses such request, to
grant such a license itself, if the Federal agency determines that such
—

(1) action is
necessary because the contractor or assignee has not taken, or is not
expected to take within a reasonable time, effective steps to achieve
practical application of the subject invention in such field of
use;

(2) action is
necessary to alleviate health or safety needs which are not reasonably
satisfied by the contractor, assignee, or their
licensees;

(3) action is
necessary to meet requirements for public use specified by Federal
regulations and such requirements are not reasonably satisfied by the
contractor, assignee, or licensees; or

(4) action is
necessary because the agreement required by
section 204 has not been obtained or waived or
because a licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of its agreement obtained
pursuant to
section
204
.

(b) A determination pursuant
to this section or
section 202(b)(4) shall
not be subject to chapter 71 of title 41. An administrative appeals
procedure shall be established by regulations promulgated in accordance with
section 206.
Additionally, any contractor, inventor, assignee, or exclusive licensee
adversely affected by a determination under this section may, at any time
within sixty days after the determination is issued, file a petition in the
United States Court of Federal Claims, which shall have jurisdiction to
determine the appeal on the record and to affirm, reverse, remand or modify,
as appropriate, the determination of the Federal agency. In cases described
in paragraphs (1) and (3) of subsection (a), the agency’s determination
shall be held in abeyance pending the exhaustion of appeals or petitions
filed under the preceding sentence.

35 U.S.C. 204
Preference for United States industry.

Notwithstanding any other
provision of this chapter, no small business firm or nonprofit organization which
receives title to any subject invention and no assignee of any such small business
firm or nonprofit organization shall grant to any person the exclusive right to use
or sell any subject invention in the United States unless such person agrees that any
products embodying the subject invention or produced through the use of the subject
invention will be manufactured substantially in the United States. However, in
individual cases, the requirement for such an agreement may be waived by the Federal
agency under whose funding agreement the invention was made upon a showing by the
small business firm, nonprofit organization, or assignee that reasonable but
unsuccessful efforts have been made to grant licenses on similar terms to potential
licensees that would be likely to manufacture substantially in the United States or
that under the circumstances domestic manufacture is not commercially
feasible.

35 U.S.C. 205
Confidentiality.

Federal agencies are authorized
to withhold from disclosure to the public information disclosing any invention in
which the Federal Government owns or may own a right, title, or interest (including a
nonexclusive license) for a reasonable time in order for a patent application to be
filed. Furthermore, Federal agencies shall not be required to release copies of any
document which is part of an application for patent filed with the United States
Patent and Trademark Office or with any foreign patent office.

35 U.S.C. 206
Uniform clauses and regulations.

The Secretary of Commerce may
issue regulations which may be made applicable to Federal agencies implementing the
provisions of
sections 202 through
204 of this chapter and shall establish standard funding
agreement provisions required under this chapter. The regulations and the standard
funding agreement shall be subject to public comment before their
issuance.

(1) apply for, obtain,
and maintain patents or other forms of protection in the United States
and in foreign countries on inventions in which the Federal Government
owns a right, title, or interest;

(2) grant
nonexclusive, exclusive, or partially exclusive licenses under
federally owned inventions, royalty-free or for royalties or other
consideration, and on such terms and conditions, including the grant
to the licensee of the right of enforcement pursuant to the provisions
of
chapter 29 as
determined appropriate in the public interest;

(3) undertake all
other suitable and necessary steps to protect and administer rights to
federally owned inventions on behalf of the Federal Government either
directly or through contract, including acquiring rights for and
administering royalties to the Federal Government in any invention,
but only to the extent the party from whom the rights are acquired
voluntarily enters into the transaction, to facilitate the licensing
of a federally owned invention; and

(4) transfer custody
and administration, in whole or in part, to another Federal agency, of
the right, title, or interest in any federally owned
invention.

(b) For the purpose of
assuring the effective management of Government-owned inventions, the
Secretary of Commerce authorized to -

35 U.S.C. 208
Regulations governing Federal licensing.

The Secretary of Commerce is
authorized to promulgate regulations specifying the terms and conditions upon which
any federally owned invention, other than inventions owned by the Tennessee Valley
Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive
basis.

35 U.S.C. 209
Licensing federally owned inventions.

(a) AUTHORITY.—A Federal
agency may grant an exclusive or partially exclusive license on a federally
owned invention under section
207(a)(2) only
if—

(1) granting the
license is a reasonable and necessary incentive to—

(A) call forth
the investment capital and expenditures needed to bring the
invention to practical application; or

(B) otherwise
promote the invention’s utilization by the
public;

(2) the Federal agency
finds that the public will be served by the granting of the license,
as indicated by the applicant’s intentions, plans, and ability to
bring the invention to practical application or otherwise promote the
invention’s utilization by the public, and that the proposed scope of
exclusivity is not greater than reasonably necessary to provide the
incentive for bringing the invention to practical application, as
proposed by the applicant, or otherwise to promote the invention’s
utilization by the public;

(3) the applicant
makes a commitment to achieve practical application of the invention
within a reasonable time, which time may be extended by the agency
upon the applicant’s request and the applicant’s demonstration that
the refusal of such extension would be unreasonable;

(4) granting the
license will not tend to substantially lessen competition or create or
maintain a violation of the Federal antitrust laws;
and

(5) in the case of an
invention covered by a foreign patent application or patent, the
interests of the Federal Government or United States industry in
foreign commerce will be enhanced.

(b) MANUFACTURE IN UNITED
STATES.—A Federal agency shall normally grant a license under section
207(a)(2) to use or sell any federally owned invention in the United States
only to a licensee who agrees that any products embodying the invention or
produced through the use of the invention will be manufactured substantially
in the United States.

(c) SMALL BUSINESS.—First
preference for the granting of any exclusive or partially exclusive licenses
under section
207(a)(2) shall be given
to small business firms having equal or greater likelihood as other
applicants to bring the invention to practical application within a
reasonable time.

(d) TERMS AND
CONDITIONS.—Any licenses granted under section
207(a)(2) shall contain such terms and conditions as
the granting agency considers appropriate, and shall include
provisions—

(1) retaining a
nontransferable, irrevocable, paid-up license for any Federal agency
to practice the invention or have the invention practiced throughout
the world by or on behalf of the Government of the United
States;

(2) requiring periodic
reporting on utilization of the invention, and utilization efforts, by
the licensee, but only to the extent necessary to enable the Federal
agency to determine whether the terms of the license are being
complied with, except that any such report shall be treated by the
Federal agency as commercial and financial information obtained from a
person and privileged and confidential and not subject to disclosure
under section 552 of title 5; and

(3) empowering the
Federal agency to terminate the license in whole or in part if the
agency determines that—

(A) the licensee
is not executing its commitment to achieve practical application
of the invention, including commitments contained in any plan
submitted in support of its request for a license, and the
licensee cannot otherwise demonstrate to the satisfaction of the
Federal agency that it has taken, or can be expected to take
within a reasonable time, effective steps to achieve practical
application of the invention;

(B) the licensee
is in breach of an agreement described in subsection
(b);

(C) termination
is necessary to meet requirements for public use specified by
Federal regulations issued after the date of the license, and
such requirements are not reasonably satisfied by the licensee;
or

(D) the licensee
has been found by a court of competent jurisdiction to have
violated the Federal antitrust laws in connection with its
performance under the license agreement.

(e) PUBLIC NOTICE.—No
exclusive or partially exclusive license may be granted under section
207(a)(2) unless public notice of the intention to grant an exclusive or
partially exclusive license on a federally owned invention has been provided
in an appropriate manner at least 15 days before the license is granted, and
the Federal agency has considered all comments received before the end of
the comment period in response to that public notice. This subsection shall
not apply to the licensing of inventions made under a cooperative research
and development agreement entered into under section 12 of the
Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C.
3710a).

(f) PLAN.—No Federal agency
shall grant any license under a patent or patent application on a federally
owned invention unless the person requesting the license has supplied the
agency with a plan for development or marketing of the invention, except
that any such plan shall be treated by the Federal agency as commercial and
financial information obtained from a person and privileged and confidential
and not subject to disclosure under section 552 of title 5.

35 U.S.C. 210
Precedence of chapter.

(a) This chapter shall take
precedence over any other Act which would require a disposition of rights in
subject inventions of small business firms or nonprofit organizations
contractors in a manner that is inconsistent with this chapter, including
but not necessarily limited to the following:

(1) section 10(a) of
the Act of June 29, 1935, as added by title I of the Act of August 14,
1946 (7 U.S.C. 427i(a); 60 Stat. 1085);

(21) section 408 of the
Water Resources and Development Act of 1978 (42 U.S.C. 7879; 92 Stat.
1360).

The Act creating this
chapter shall be construed to take precedence over any future Act unless
that Act specifically cites this Act and provides that it shall take
precedence over this Act.

(b) Nothing in this chapter
is intended to alter the effect of the laws cited in paragraph (a) of this
section or any other laws with respect to the disposition of rights in
inventions made in the performance of funding agreements with persons other
than nonprofit organizations or small business firms.

(c) Nothing in this chapter
is intended to limit the authority of agencies to agree to the disposition
of rights in inventions made in the performance of work under funding
agreements with persons other than nonprofit organizations or small business
firms in accordance with the Statement of Government Patent Policy issued on
February 18, 1983, agency regulations, or other applicable regulations or to
otherwise limit the authority of agencies to allow such persons to retain
ownership of inventions, except that all funding agreements, including those
with other than small business firms and nonprofit organizations, shall
include the requirements established in
section
202(c)(4)
and
section 203
. Any disposition of rights in inventions made in
accordance with the Statement or implementing regulations, including any
disposition occurring before enactment of this section, are hereby
authorized.

(d) Nothing in this chapter
shall be construed to require the disclosure of intelligence sources or
methods or to otherwise affect the authority granted to the Director of
Central Intelligence by statute or Executive order for the protection of
intelligence sources or methods.

(e) The provisions of the
Stevenson-Wydler Technology Innovation Act of 1980 shall take precedence
over the provisions of this chapter to the extent that they permit or
require a disposition of rights in subject inventions which is inconsistent
with this chapter.

35 U.S.C. 212
Disposition of rights in educational awards.

No scholarship, fellowship,
training grant, or other funding agreement made by a Federal agency primarily to an
awardee for educational purposes will contain any provision giving the Federal agency
any rights to inventions made by the awardee.

35 U.S.C. 251
Reissue of defective patents.

[Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See
35 U.S.C. 251 (pre-AIA) for
the law otherwise applicable.]

(a) IN GENERAL.—Whenever
any patent is, through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim in the
patent, the Director shall, on the surrender of such patent and the payment
of the fee required by law, reissue the patent for the invention disclosed
in the original patent, and in accordance with a new and amended
application, for the unexpired part of the term of the original patent. No
new matter shall be introduced into the application for
reissue.

(b) MULTIPLE REISSUED
PATENTS.— The Director may issue several reissued patents for distinct and
separate parts of the thing patented, upon demand of the applicant, and upon
payment of the required fee for a reissue for each of such reissued
patents.

(c) APPLICABILITY OF THIS
TITLE.— The provisions of this title relating to applications for patent
shall be applicable to applications for reissue of a patent, except that
application for reissue may be made and sworn to by the assignee of the
entire interest if the application does not seek to enlarge the scope of the
claims of the original patent or the application for the original patent was
filed by the assignee of the entire interest.

(d) REISSUE PATENT
ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless applied for within two
years from the grant of the original patent.

35 U.S.C. 251 (pre-AIA)
Reissue of defective patents.

[Editor Note:
Not applicable to any patent
application filed on or after September 16, 2012. See
35 U.S.C.
251
for the law otherwise
applicable.]

Whenever any patent is, through
error without any deceptive intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reason of the
patentee claiming more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment of the fee required
by law, reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of the term of
the original patent. No new matter shall be introduced into the application for
reissue.

The Director may issue several
reissued patents for distinct and separate parts of the thing patented, upon demand
of the applicant, and upon payment of the required fee for a reissue for each of such
reissued patents.

The provisions of this title
relating to applications for patent shall be applicable to applications for reissue
of a patent, except that application for reissue may be made and sworn to by the
assignee of the entire interest if the application does not seek to enlarge the scope
of the claims of the original patent.

No reissued patent shall be
granted enlarging the scope of the claims of the original patent unless applied for
within two years from the grant of the original patent.

35 U.S.C. 252
Effect of reissue.

The surrender of the original
patent shall take effect upon the issue of the reissued patent, and every reissued
patent shall have the same effect and operation in law, on the trial of actions for
causes thereafter arising, as if the same had been originally granted in such amended
form, but in so far as the claims of the original and reissued patents are
substantially identical, such surrender shall not affect any action then pending nor
abate any cause of action then existing, and the reissued patent, to the extent that
its claims are substantially identical with the original patent, shall constitute a
continuation thereof and have effect continuously from the date of the original
patent.

A reissued patent shall not
abridge or affect the right of any person or that person’s successors in business
who, prior to the grant of a reissue, made, purchased, offered to sell, or used
within the United States, or imported into the United States, anything patented by
the reissued patent, to continue the use of, to offer to sell, or to sell to others
to be used, offered for sale, or sold, the specific thing so made, purchased, offered
for sale, used, or imported unless the making, using, offering for sale, or selling
of such thing infringes a valid claim of the reissued patent which was in the
original patent. The court before which such matter is in question may provide for
the continued manufacture, use, offer for sale, or sale of the thing made, purchased,
offered for sale, used, or imported as specified, or for the manufacture, use, offer
for sale, or sale in the United States of which substantial preparation was made
before the grant of the reissue, and the court may also provide for the continued
practice of any process patented by the reissue that is practiced, or for the
practice of which substantial preparation was made, before the grant of the reissue,
to the extent and under such terms as the court deems equitable for the protection of
investments made or business commenced before the grant of the
reissue.

35 U.S.C. 253
Disclaimer.

[Editor Note: Applicable to all proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 253 (pre-AIA) for
the law otherwise applicable.]

(a) IN GENERAL.—Whenever a claim of a
patent is invalid the remaining claims shall not thereby be rendered
invalid. A patentee, whether of the whole or any sectional interest
therein, may, on payment of the fee required by law, make disclaimer of
any complete claim, stating therein the extent of his interest in such
patent. Such disclaimer shall be in writing and recorded in the Patent
and Trademark Office, and it shall thereafter be considered as part of
the original patent to the extent of the interest possessed by the
disclaimant and by those claiming under him.

(b) ADDITIONAL
DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any
patentee or applicant may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of the patent granted or to be
granted.

35 U.S.C. 253 (pre-AIA)
Disclaimer.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
253
for the law otherwise
applicable.]

Whenever, without any deceptive
intention, a claim of a patent is invalid the remaining claims shall not thereby be
rendered invalid. A patentee, whether of the whole or any sectional interest therein,
may, on payment of the fee required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent. Such disclaimer shall be
in writing and recorded in the Patent and Trademark Office, and it shall thereafter
be considered as part of the original patent to the extent of the interest possessed
by the disclaimant and by those claiming under him.

In like manner any patentee or
applicant may disclaim or dedicate to the public the entire term, or any terminal
part of the term, of the patent granted or to be granted.

Whenever a mistake in a patent,
incurred through the fault of the Patent and Trademark Office, is clearly disclosed
by the records of the Office, the Director may issue a certificate of correction
stating the fact and nature of such mistake, under seal, without charge, to be
recorded in the records of patents. A printed copy thereof shall be attached to each
printed copy of the patent, and such certificate shall be considered as part of the
original patent. Every such patent, together with such certificate, shall have the
same effect and operation in law on the trial of actions for causes thereafter
arising as if the same had been originally issued in such corrected form. The
Director may issue a corrected patent without charge in lieu of and with like effect
as a certificate of correction.

35 U.S.C. 255
Certificate of correction of applicant’s
mistake.

Whenever a mistake of a clerical
or typographical nature, or of minor character, which was not the fault of the Patent
and Trademark Office, appears in a patent and a showing has been made that such
mistake occurred in good faith, the Director may, upon payment of the required fee,
issue a certificate of correction, if the correction does not involve such changes in
the patent as would constitute new matter or would require reexamination. Such
patent, together with the certificate, shall have the same effect and operation in
law on the trial of actions for causes thereafter arising as if the same had been
originally issued in such corrected form.

35 U.S.C. 256
Correction of named inventor.

[Editor Note: Applicable to proceedings commenced on or after
September 16, 2012. See
35 U.S.C. 256 (pre-AIA) for
the law otherwise applicable.]

(a) CORRECTION.—Whenever through error
a person is named in an issued patent as the inventor, or through error
an inventor is not named in an issued patent, the Director may, on
application of all the parties and assignees, with proof of the facts and
such other requirements as may be imposed, issue a certificate correcting
such error.

(b) PATENT VALID IF
ERROR CORRECTED.— The error of omitting inventors or naming persons who
are not inventors shall not invalidate the patent in which such error
occurred if it can be corrected as provided in this section. The court
before which such matter is called in question may order correction of
the patent on notice and hearing of all parties concerned and the
Director shall issue a certificate accordingly.

35 U.S.C. 256 (pre-AIA)
Correction of named inventor.

[Editor Note:
Not applicable to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
256
for the law otherwise
applicable.]

Whenever through error a person
is named in an issued patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without any deceptive intention on his
part, the Director may, on application of all the parties and assignees, with proof
of the facts and such other requirements as may be imposed, issue a certificate
correcting such error.

The error of omitting inventors
or naming persons who are not inventors shall not invalidate the patent in which such
error occurred if it can be corrected as provided in this section. The court before
which such matter is called in question may order correction of the patent on notice
and hearing of all parties concerned and the Director shall issue a certificate
accordingly.

(a) REQUEST FOR SUPPLEMENTAL
EXAMINATION.—A patent owner may request supplemental examination of a patent
in the Office to consider, reconsider, or correct information believed to be
relevant to the patent, in accordance with such requirements as the Director
may establish. Within 3 months after the date a request for supplemental
examination meeting the requirements of this section is received, the
Director shall conduct the supplemental examination and shall conclude such
examination by issuing a certificate indicating whether the information
presented in the request raises a substantial new question of patentability.

(b) REEXAMINATION ORDERED.—If the
certificate issued under subsection (a) indicates that a substantial new
question of patentability is raised by 1 or more items of information in the
request, the Director shall order reexamination of the patent. The
reexamination shall be conducted according to procedures established by
chapter
30
, except that the patent owner shall not have the
right to file a statement pursuant to section 304. During the reexamination,
the Director shall address each substantial new question of patentability
identified during the supplemental examination, notwithstanding the
limitations in
chapter 30 relating to
patents and printed publication or any other provision of such chapter.

(c) EFFECT.—

(1) IN GENERAL.—A patent shall not
be held unenforceable on the basis of conduct relating to information
that had not been considered, was inadequately considered, or was
incorrect in a prior examination of the patent if the information was
considered, reconsidered, or corrected during a supplemental
examination of the patent. The making of a request under subsection
(a), or the absence thereof, shall not be relevant to enforceability
of the patent under section 282.

(2) EXCEPTIONS.—

(A) PRIOR
ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled
with particularity in a civil action, or set forth with
particularity in a notice received by the patent owner under
section 505(j) (2)(B)(iv)(II) of the Federal Food, Drug, and
Cosmetic Act (21 U.S.C. 355(j) (2)(B)(iv)(II)), before the date
of a supplemental examination request under subsection (a) to
consider, reconsider, or correct information forming the basis
for the allegation.

(B) PATENT ENFORCEMENT
ACTIONS.—In an action brought under section 337(a) of the Tariff
Act of 1930 (19 U.S.C. 1337(a)), or section 281, paragraph (1)
shall not apply to any defense raised in the action that is
based upon information that was considered, reconsidered, or
corrected pursuant to a supplemental examination request under
subsection (a), unless the supplemental examination, and any
reexamination ordered pursuant to the request, are concluded
before the date on which the action is brought.

(d) FEES AND REGULATIONS.—

(1) FEES.—The Director shall, by
regulation, establish fees for the submission of a request for
supplemental examination of a patent, and to consider each item of
information submitted in the request. If reexamination is ordered
under subsection (b), fees established and applicable to ex parte
reexamination proceedings under
chapter 30 shall
be paid, in addition to fees applicable to supplemental
examination.

(2) REGULATIONS.—The Director shall
issue regulations governing the form, content, and other requirements
of requests for supplemental examination, and establishing procedures
for reviewing information submitted in such requests.

(e) FRAUD.—If the Director becomes aware,
during the course of a supplemental examination or reexamination proceeding
ordered under this section, that a material fraud on the Office may have
been committed in connection with the patent that is the subject of the
supplemental examination, then in addition to any other actions the Director
is authorized to take, including the cancellation of any claims found to be
invalid under section 307 as a result of a reexamination ordered under this
section, the Director shall also refer the matter to the Attorney General
for such further action as the Attorney General may deem appropriate. Any
such referral shall be treated as confidential, shall not be included in the
file of the patent, and shall not be disclosed to the public unless the
United States charges a person with a criminal offense in connection with
such referral.

(f) RULE OF CONSTRUCTION.—Nothing in this
section shall be construed—

(1) to preclude the imposition of
sanctions based upon criminal or antitrust laws (including section
1001(a) of title 18, the first section of the Clayton Act, and section
5 of the Federal Trade Commission Act to the extent that section
relates to unfair methods of competition);

(2) to limit the authority of the
Director to investigate issues of possible misconduct and impose
sanctions for misconduct in connection with matters or proceedings
before the Office; or

(3) to limit the authority of the
Director to issue regulations under chapter 3 relating to sanctions
for misconduct by representatives practicing before the
Office.

CHAPTER 26 - OWNERSHIP AND ASSIGNMENT

261 Ownership; assignment.

262 Joint owners.

35 U.S.C. 261
Ownership; assignment.

Subject to the provisions of this
title, patents shall have the attributes of personal property.

Applications for patent, patents,
or any interest therein, shall be assignable in law by an instrument in writing. The
applicant, patentee, or his assigns or legal representatives may in like manner grant
and convey an exclusive right under his application for patent, or patents, to the
whole or any specified part of the United States.

A certificate of acknowledgment
under the hand and official seal of a person authorized to administer oaths within
the United States, or, in a foreign country, of a diplomatic or consular officer of
the United States or an officer authorized to administer oaths whose authority is
proved by a certificate of a diplomatic or consular officer of the United States, or
apostille of an official designated by a foreign country which, by treaty or
convention, accords like effect to apostilles of designated officials in the United
States, shall be
prima facie evidence of the
execution of an assignment, grant, or conveyance of a patent or application for
patent.

An assignment, grant, or
conveyance shall be void as against any subsequent purchaser or mortgagee for a
valuable consideration, without notice, unless it is recorded in the Patent and
Trademark Office within three months from its date or prior to the date of such
subsequent purchase or mortgage.

35 U.S.C. 262
Joint owners.

In the absence of any agreement
to the contrary, each of the joint owners of a patent may make, use, offer to
sell, or sell the patented invention within the United States, or import the patented
invention into the United States, without the consent of and without accounting to
the other owners.

CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS

35 U.S.C. 266
[Repealed.]

35 U.S.C. 267
Time for taking action in Government
applications.

Notwithstanding the provisions of
sections 133 and
151, the
Director may extend the time for taking any action to three years, when an
application has become the property of the United States and the head of the
appropriate department or agency of the Government has certified to the Director that
the invention disclosed therein is important to the armament or defense of the United
States.

CHAPTER 28 - INFRINGEMENT OF PATENTS

271 Infringement of patent.

272 Temporary presence in the United States.

273 Defense to infringement based on prior commercial
use.

35 U.S.C. 271
Infringement of patent.

(a) Except as otherwise
provided in this title, whoever without authority makes, uses, offers to
sell, or sells any patented invention, within the United States, or imports
into the United States any patented invention during the term of the patent
therefor, infringes the patent.

(b) Whoever actively induces
infringement of a patent shall be liable as an infringer.

(c) Whoever offers to sell
or sells within the United States or imports into the United States a
component of a patented machine, manufacture, combination, or composition,
or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be
especially made or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a contributory
infringer.

(d) No patent owner
otherwise entitled to relief for infringement or contributory infringement
of a patent shall be denied relief or deemed guilty of misuse or illegal
extension of the patent right by reason of his having done one or more of
the following: (1) derived revenue from acts which if performed by another
without his consent would constitute contributory infringement of the
patent; (2) licensed or authorized another to perform acts which if
performed without his consent would constitute contributory infringement of
the patent; (3) sought to enforce his patent rights against infringement or
contributory infringement; (4) refused to license or use any rights to the
patent; or (5) conditioned the license of any rights to the patent or
the sale of the patented product on the acquisition of a license to rights
in another patent or purchase of a separate product, unless, in view of the
circumstances, the patent owner has market power in the relevant market for
the patent or patented product on which the license or sale is
conditioned.

(e)

(1) It shall not be
an act of infringement to make, use, offer to sell, or sell within the
United States or import into the United States a patented invention
(other than a new animal drug or veterinary biological product (as
those terms are used in the Federal Food, Drug, and Cosmetic Act and
the Act of March 4, 1913) which is primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma technology, or other
processes involving site specific genetic manipulation techniques)
solely for uses reasonably related to the development and submission
of information under a Federal law which regulates the manufacture,
use, or sale of drugs or veterinary biological
products.

(2) It shall be an act
of infringement to submit —

(A) an
application under section 505(j) of the Federal Food, Drug, and
Cosmetic Act or described in section 505(b)(2) of such Act for a
drug claimed in a patent or the use of which is claimed in a
patent,

(B) an
application under section 512 of such Act or under the Act of
March 4, 1913 (21 U.S.C. 151 - 158) for a drug or veterinary
biological product which is not primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma technology, or other
processes involving site specific genetic manipulation
techniques and which is claimed in a patent or the use of which
is claimed in a patent, or

(C)

(i) with respect to a
patent that is identified in the list of patents described
in section 351(l)(3) of the Public Health Service Act
(including as provided under section 351(l)(7) of such
Act), an application seeking approval of a biological
product, or

(ii) if the applicant
for the application fails to provide the application and
information required under section 351(l)(2)(A) of such
Act, an application seeking approval of a biological
product for a patent that could be identified pursuant to
section 351(l)(3)(A)(i) of such Act,

if the purpose of such submission is to obtain
approval under such Act to engage in the commercial manufacture,
use, or sale of a drug, veterinary biological product, or
biological product claimed in a patent or the use of which is
claimed in a patent before the expiration of such
patent.

(3) In any action for
patent infringement brought under this section, no injunctive or other
relief may be granted which would prohibit the making, using, offering
to sell, or selling within the United States or importing into the
United States of a patented invention under paragraph
(1).

(4) For an act of
infringement described in paragraph (2)—

(A) the court
shall order the effective date of any approval of the drug or
veterinary biological product involved in the infringement to be
a date which is not earlier than the date of the expiration of
the patent which has been infringed,

(B) injunctive
relief may be granted against an infringer to prevent the
commercial manufacture, use, offer to sell, or sale within the
United States or importation into the United States of an
approved drug, veterinary biological product, or biological
product,

(C) damages or
other monetary relief may be awarded against an infringer only
if there has been commercial manufacture, use, offer to sell, or
sale within the United States or importation into the United
States of an approved drug, veterinary biological product, or
biological product, and

(D) the court shall order a
permanent injunction prohibiting any infringement of the patent
by the biological product involved in the infringement until a
date which is not earlier than the date of the expiration of the
patent that has been infringed under paragraph (2)(C), provided
the patent is the subject of a final court decision, as defined
in section 351(k)(6) of the Public Health Service Act, in an
action for infringement of the patent under section 351(l)(6) of
such Act, and the biological product has not yet been approved
because of section 351(k)(7) of such Act.

The remedies
prescribed by subparagraphs (A), (B), (C), and (D) are the only
remedies which may be granted by a court for an act of infringement
described in paragraph (2), except that a court may award attorney
fees under
section
285
.

(5) Where a person has
filed an application described in paragraph (2) that includes a
certification under subsection (b)(2)(A)(iv) or (j) (2)(A)(vii)(IV) of
section 505 of the Federal Food, Drug, and Cosmetic Act (21 U.S.C.
355), and neither the owner of the patent that is the subject of the
certification nor the holder of the approved application under
subsection (b) of such section for the drug that is claimed by the
patent or a use of which is claimed by the patent brought an action
for infringement of such patent before the expiration of 45 days after
the date on which the notice given under subsection (b)(3) or (j)
(2)(B) of such section was received, the courts of the United States
shall, to the extent consistent with the Constitution, have subject
matter jurisdiction in any action brought by such person under section
2201 of title 28 for a declaratory judgment that such patent is
invalid or not infringed.

(6)

(A) Subparagraph (B) applies,
in lieu of paragraph (4), in the case of a patent-

(i) that is identified,
as applicable, in the list of patents described in section
351(l)(4) of the Public Health Service Act or the lists of
patents described in section 351(l)(5)(B) of such Act with
respect to a biological product; and

(ii) for which an action
for infringement of the patent with respect to the
biological product—

(I) was brought
after the expiration of the 30-day period described
in subparagraph (A) or (B), as applicable, of
section 351(l)(6) of such Act; or

(II) was brought
before the expiration of the 30-day period described
in subclause (I), but which was dismissed without
prejudice or was not prosecuted to judgment in good
faith.

(B) In an action for
infringement of a patent described in subparagraph (A), the sole
and exclusive remedy that may be granted by a court, upon a
finding that the making, using, offering to sell, selling, or
importation into the United States of the biological product
that is the subject of the action infringed the patent, shall be
a reasonable royalty.

(C) The owner of a patent
that should have been included in the list described in section
351(l)(3)(A) of the Public Health Service Act, including as
provided under section 351(l)(7) of such Act for a biological
product, but was not timely included in such list, may not bring
an action under this section for infringement of the patent with
respect to the biological product.

(f)

(1) Whoever without
authority supplies or causes to be supplied in or from the United
States all or a substantial portion of the components of a patented
invention, where such components are uncombined in whole or in part,
in such manner as to actively induce the combination of such
components outside of the United States in a manner that would
infringe the patent if such combination occurred within the United
States, shall be liable as an infringer.

(2) Whoever without
authority supplies or causes to be supplied in or from the United
States any component of a patented invention that is especially made
or especially adapted for use in the invention and not a staple
article or commodity of commerce suitable for substantial
noninfringing use, where such component is uncombined in whole or in
part, knowing that such component is so made or adapted and intending
that such component will be combined outside of the United States in a
manner that would infringe the patent if such combination occurred
within the United States, shall be liable as an
infringer.

(g) Whoever without
authority imports into the United States or offers to sell, sells, or uses
within the United States a product which is made by a process patented in
the United States shall be liable as an infringer, if the importation, offer
to sell, sale, or use of the product occurs during the term of such process
patent. In an action for infringement of a process patent, no remedy may be
granted for infringement on account of the noncommercial use or retail sale
of a product unless there is no adequate remedy under this title for
infringement on account of the importation or other use, offer to sell, or
sale of that product. A product which is made by a patented process will,
for purposes of this title, not be considered to be so made after
—

(1) it is materially
changed by subsequent processes; or

(2) it becomes a
trivial and nonessential component of another product.

(h) As used in this section,
the term “whoever” includes any State, any instrumentality of a State, any
officer or employee of a State or instrumentality of a State acting in his
official capacity. Any State, and any such instrumentality, officer, or
employee, shall be subject to the provisions of this title in the same
manner and to the same extent as any nongovernmental entity.

(i) As used in this section,
an “offer for sale” or an “offer to sell” by a person other than the
patentee or any assignee of the patentee, is that in which the sale will
occur before the expiration of the term of the patent.

35 U.S.C. 272
Temporary presence in the United States.

The use of any invention in any
vessel, aircraft or vehicle of any country which affords similar privileges to
vessels, aircraft, or vehicles of the United States, entering the United States
temporarily or accidentally, shall not constitute infringement of any patent, if the
invention is used exclusively for the needs of the vessel, aircraft, or vehicle and
is not offered for sale or sold in or used for the manufacture of anything to be sold
in or exported from the United States.

35 U.S.C. 273
Defense to infringement based on prior commercial
use.

(a) IN GENERAL.—A person
shall be entitled to a defense under section
282(b) with respect to
subject matter consisting of a process, or consisting of a machine,
manufacture, or composition of matter used in a manufacturing or other
commercial process, that would otherwise infringe a claimed invention being
asserted against the person if—

(1) such person,
acting in good faith, commercially used the subject matter in the
United States, either in connection with an internal commercial use or
an actual arm’s length sale or other arm’s length commercial transfer
of a useful end result of such commercial use; and

(2) such commercial
use occurred at least 1 year before the earlier of either—

(A) the
effective filing date of the claimed invention;
or

(B) the date on
which the claimed invention was disclosed to the public in a
manner that qualified for the exception from prior art under
section
102(b).

(b) BURDEN OF PROOF.—A person asserting a defense under this section
shall have the burden of establishing the defense by clear and convincing
evidence.

(c) ADDITIONAL COMMERCIAL
USES.—

(1) PREMARKETING REGULATORY
REVIEW.— Subject matter for which commercial marketing or use is
subject to a premarketing regulatory review period during which the
safety or efficacy of the subject matter is established, including any
period specified in section
156(g), shall be
deemed to be commercially used for purposes of subsection (a)(1)
during such regulatory review period.

(2) NONPROFIT LABORATORY USE.—A use
of subject matter by a nonprofit research laboratory or other
nonprofit entity, such as a university or hospital, for which the
public is the intended beneficiary, shall be deemed to be a commercial
use for purposes of subsection (a)(1), except that a defense under
this section may be asserted pursuant to this paragraph only for
continued and noncommercial use by and in the laboratory or other
nonprofit entity.

(d) EXHAUSTION OF RIGHTS.—Notwithstanding
subsection (e)(1), the sale or other disposition of a useful end result by a
person entitled to assert a defense under this section in connection with a
patent with respect to that useful end result shall exhaust the patent
owner’s rights under the patent to the extent that such rights would have
been exhausted had such sale or other disposition been made by the patent
owner.

(e) LIMITATIONS AND
EXCEPTIONS.—

(1) PERSONAL
DEFENSE.—

(A) IN GENERAL.—A defense
under this section may be asserted only by the person who
performed or directed the performance of the commercial use
described in subsection (a), or by an entity that controls, is
controlled by, or is under common control with such
person.

(B) TRANSFER OF RIGHT.—Except
for any transfer to the patent owner, the right to assert a
defense under this section shall not be licensed or assigned or
transferred to another person except as an ancillary and
subordinate part of a good-faith assignment or transfer for
other reasons of the entire enterprise or line of business to
which the defense relates.

(C) RESTRICTION ON SITES.—A
defense under this section, when acquired by a person as part of
an assignment or transfer described in subparagraph (B), may
only be asserted for uses at sites where the subject matter that
would otherwise infringe a claimed invention is in use before
the later of the effective filing date of the claimed invention
or the date of the assignment or transfer of such enterprise or
line of business.

(2) DERIVATION.—A person may not
assert a defense under this section if the subject matter on which the
defense is based was derived from the patentee or persons in privity
with the patentee.

(3) NOT A GENERAL LICENSE.—The
defense asserted by a person under this section is not a general
license under all claims of the patent at issue, but extends only to
the specific subject matter for which it has been established that a
commercial use that qualifies under this section occurred, except that
the defense shall also extend to variations in the quantity or volume
of use of the claimed subject matter, and to improvements in the
claimed subject matter that do not infringe additional specifically
claimed subject matter of the patent.

(4) ABANDONMENT OF USE.—A person who
has abandoned commercial use (that qualifies under this section) of
subject matter may not rely on activities performed before the date of
such abandonment in establishing a defense under this section with
respect to actions taken on or after the date of such
abandonment.

(5) UNIVERSITY
EXCEPTION.—

(A) IN GENERAL.—A person
commercially using subject matter to which subsection (a)
applies may not assert a defense under this section if the
claimed invention with respect to which the defense is asserted
was, at the time the invention was made, owned or subject to an
obligation of assignment to either an institution of higher
education (as defined in section 101(a) of the Higher Education
Act of 1965 (20 U.S.C. 1001(a)), or a technology transfer
organization whose primary purpose is to facilitate the
commercialization of technologies developed by one or more such
institutions of higher education.

(B) EXCEPTION.—Subparagraph
(A) shall not apply if any of the activities required to reduce
to practice the subject matter of the claimed invention could
not have been under taken using funds provided by the Federal
Government.

(f) UNREASONABLE ASSERTION OF DEFENSE.—If
the defense under this section is pleaded by a person who is found to
infringe the patent and who subsequently fails to demonstrate a reasonable
basis for asserting the defense, the court shall find the case exceptional
for the purpose of awarding attorney fees under section 285.

(g) INVALIDITY.—A patent shall not be
deemed to be invalid under section
102 or
103
solely because a defense is raised or established under this
section.

35 U.S.C. 281
Remedy for infringement of patent.

35 U.S.C. 282
Presumption of validity; defenses.

(a) IN GENERAL.—A patent shall be
presumed valid. Each claim of a patent (whether in independent,
dependent, or multiple dependent form) shall be presumed valid
independently of the validity of other claims; dependent or multiple
dependent claims shall be presumed valid even though dependent upon an
invalid claim. The burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such
invalidity.

(b) DEFENSES.—The
following shall be defenses in any action involving the validity or
infringement of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement, or
unenforceability.

(2) Invalidity of
the patent or any claim in suit on any ground specified in
part
II
as a condition for
patentability.

(3) Invalidity of
the patent or any claim in suit for failure to comply
with—

(A) any requirement of
section 112, except that the failure
to disclose the best mode shall not be a basis on which any
claim of a patent may be canceled or held invalid or
otherwise unenforceable; or

(c) NOTICE OF ACTIONS;
ACTIONS DURING EXTENSION OF PATENT TERM.— In an action involving the
validity or infringement of a patent the party asserting invalidity or
noninfringement shall give notice in the pleadings or otherwise in
writing to the adverse party at least thirty days before the trial, of
the country, number, date, and name of the patentee of any patent, the
title, date, and page numbers of any publication to be relied upon as
anticipation of the patent in suit or, except in actions in the United
States Court of Federal Claims, as showing the state of the art, and the
name and address of any person who may be relied upon as the prior
inventor or as having prior knowledge of or as having previously used or
offered for sale the invention of the patent in suit. In the absence of
such notice proof of the said matters may not be made at the trial except
on such terms as the court requires.

Invalidity of the
extension of a patent term or any portion thereof under
section 154(b) or
156 because of the
material failure—

(1) by the
applicant for the extension, or

(2) by the
Director,

to comply with the requirements of such section shall be a
defense in any action involving the infringement of a patent during the
period of the extension of its term and shall be pleaded. A due diligence
determination under
section
156(d)(2)
is not subject to review in such an
action.

35 U.S.C. 283
Injunction.

The several courts having
jurisdiction of cases under this title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right secured by patent, on such
terms as the court deems reasonable.

35 U.S.C. 284
Damages.

Upon finding for the claimant the
court shall award the claimant damages adequate to compensate for the infringement
but in no event less than a reasonable royalty for the use made of the invention by
the infringer, together with interest and costs as fixed by the
court.

When the damages are not found by
a jury, the court shall assess them. In either event the court may increase the
damages up to three times the amount found or assessed. Increased damages under this
paragraph shall not apply to provisional rights under
section
154(d)
.

The court may receive expert
testimony as an aid to the determination of damages or of what royalty would be
reasonable under the circumstances.

35 U.S.C. 285
Attorney fees.

35 U.S.C. 286
Time limitation on damages.

Except as otherwise provided by
law, no recovery shall be had for any infringement committed more than six years
prior to the filing of the complaint or counterclaim for infringement in the
action.

In the case of claims against the
United States Government for use of a patented invention, the period before bringing
suit, up to six years, between the date of receipt of a written claim for
compensation by the department or agency of the Government having authority to settle
such claim, and the date of mailing by the Government of a notice to the claimant
that his claim has been denied shall not be counted as a part of the period referred
to in the preceding paragraph.

35 U.S.C. 287
Limitation on damages and other remedies; marking and
notice.

(a) Patentees, and persons
making, offering for sale, or selling within the United States any patented
article for or under them, or importing any patented article into the United
States, may give notice to the public that the same is patented, either by
fixing thereon the word “patent” or the abbreviation “pat.”, together with
the number of the patent, or by fixing thereon the word “patent” or the
abbreviation “pat.” together with an address of a posting on the Internet,
accessible to the public without charge for accessing the address, that
associates the patented article with the number of the patent, or when, from
the character of the article, this cannot be done, by fixing to it, or to
the package wherein one or more of them is contained, a label containing a
like notice. In the event of failure so to mark, no damages shall be
recovered by the patentee in any action for infringement, except on proof
that the infringer was notified of the infringement and continued to
infringe thereafter, in which event damages may be recovered only for
infringement occurring after such notice. Filing of an action for
infringement shall constitute such notice.

(b)

(1) An infringer
under
section 271(g)
shall be subject to all the provisions of this title relating to
damages and injunctions except to the extent those remedies are
modified by this subsection or section 9006 of the Process Patent
Amendments Act of 1988. The modifications of remedies provided in this
subsection shall not be available to any person who —

(A) practiced
the patented process;

(B) owns or
controls, or is owned or controlled by, the person who practiced
the patented process; or

(C) had
knowledge before the infringement that a patented process was
used to make the product the importation, use, offer for sale,
or sale of which constitutes the infringement.

(2) No remedies for
infringement under
section
271(g)
shall be available with respect to any
product in the possession of, or in transit to, the person subject to
liability under such section before that person had notice of
infringement with respect to that product. The person subject to
liability shall bear the burden of proving any such possession or
transit.

(3)

(A) In making a
determination with respect to the remedy in an action brought
for infringement under
section
271(g)
, the court shall
consider—

(i) the
good faith demonstrated by the defendant with respect to a
request for disclosure;

(ii) the
good faith demonstrated by the plaintiff with respect to a
request for disclosure, and

(iii) the
need to restore the exclusive rights secured by the
patent.

(B) For purposes
of subparagraph (A), the following are evidence of good
faith:

(i) a
request for disclosure made by the
defendant;

(ii) a
response within a reasonable time by the person receiving
the request for disclosure; and

(iii) the
submission of the response by the defendant to the
manufacturer, or if the manufacturer is not known, to the
supplier, of the product to be purchased by the defendant,
together with a request for a written statement that the
process claimed in any patent disclosed in the response is
not used to produce such product.

The failure
to perform any acts described in the preceding sentence is
evidence of absence of good faith unless there are mitigating
circumstances. Mitigating circumstances include the case in
which, due to the nature of the product, the number of sources
for the product, or like commercial circumstances, a request for
disclosure is not necessary or practicable to avoid
infringement.

(4)

(A) For
purposes of this subsection, a “request for disclosure” means a
written request made to a person then engaged in the manufacture
of a product to identify all process patents owned by or
licensed to that person, as of the time of the request, that the
person then reasonably believes could be asserted to be
infringed under
section
271(g)
if that product were imported into,
or sold, offered for sale, or used in, the United States by an
unauthorized person. A request for disclosure is further limited
to a request—

(i) which
is made by a person regularly engaged in the United States
in the sale of the type of products as those manufactured
by the person to whom the request is directed, or which
includes facts showing that the person making the request
plans to engage in the sale of such products in the United
States;

(ii) which
is made by such person before the person’s first
importation, use, offer for sale, or sale of units of the
product produced by an infringing process and before the
person had notice of infringement with respect to the
product; and

(iii) which
includes a representation by the person making the request
that such person will promptly submit the patents
identified pursuant to the request to the manufacturer, or
if the manufacturer is not known, to the supplier, of the
product to be purchased by the person making the request,
and will request from that manufacturer or supplier a
written statement that none of the processes claimed in
those patents is used in the manufacture of the
product.

(B) In the case
of a request for disclosure received by a person to whom a
patent is licensed, that person shall either identify the patent
or promptly notify the licensor of the request for
disclosure.

(C) A person who
has marked, in the manner prescribed by subsection (a), the
number of the process patent on all products made by the
patented process which have been offered for sale or sold by
that person in the United States, or imported by the person into
the United States, before a request for disclosure is received
is not required to respond to the request for disclosure. For
purposes of the preceding sentence, the term “all products” does
not include products made before the effective date of the
Process Patent Amendments Act of 1988.

(5)

(A) For
purposes of this subsection, notice of infringement means actual
knowledge, or receipt by a person of a written notification, or
a combination thereof, of information sufficient to persuade a
reasonable person that it is likely that a product was made by a
process patented in the United States.

(B) A written
notification from the patent holder charging a person with
infringement shall specify the patented process alleged to have
been used and the reasons for a good faith belief that such
process was used. The patent holder shall include in the
notification such information as is reasonably necessary to
explain fairly the patent holder’s belief, except that the
patent holder is not required to disclose any trade secret
information.

(C) A person who
receives a written notification described in subparagraph (B) or
a written response to a request for disclosure described in
paragraph (4) shall be deemed to have notice of infringement
with respect to any patent referred to in such written
notification or response unless that person, absent mitigating
circumstances—

(i) promptly transmits the written notification or response
to the manufacturer or, if the manufacturer is not known,
to the supplier, of the product purchased or to be
purchased by that person; and

(ii) receives a written statement from the manufacturer or
supplier which on its face sets forth a well grounded
factual basis for a belief that the identified patents are
not infringed.

(D) For purposes
of this subsection, a person who obtains a product made by a
process patented in the United States in a quantity which is
abnormally large in relation to the volume of business of such
person or an efficient inventory level shall be rebuttably
presumed to have actual knowledge that the product was made by
such patented process.

(6) A person who
receives a response to a request for disclosure under this subsection
shall pay to the person to whom the request was made a reasonable fee
to cover actual costs incurred in complying with the request, which
may not exceed the cost of a commercially available automated patent
search of the matter involved, but in no case more than
$500.

(c)

(1) With respect to a
medical practitioner’s performance of a medical activity that
constitutes an infringement under
section
271(a)
or
(b), the provisions of
sections 281,
283,
284, and
285 shall not apply against the medical
practitioner or against a related health care entity with respect to
such medical activity.

(2) For the purposes
of this subsection:

(A) the term
“medical activity” means the performance of a medical or
surgical procedure on a body, but shall not include (i) the use
of a patented machine, manufacture, or composition of matter in
violation of such patent, (ii) the practice of a patented use of
a composition of matter in violation of such patent, or (iii)
the practice of a process in violation of a biotechnology
patent.

(B) the term
“medical practitioner” means any natural person who is licensed
by a State to provide the medical activity described in
subsection (c)(1) or who is acting under the direction of such
person in the performance of the medical
activity.

(C) the term
“related health care entity” shall mean an entity with which a
medical practitioner has a professional affiliation under which
the medical practitioner performs the medical activity,
including but not limited to a nursing home, hospital,
university, medical school, health maintenance organization,
group medical practice, or a medical clinic.

(D) the term
“professional affiliation” shall mean staff privileges, medical
staff membership, employment or contractual relationship,
partnership or ownership interest, academic appointment, or
other affiliation under which a medical practitioner provides
the medical activity on behalf of, or in association with, the
health care entity.

(E) the term
“body” shall mean a human body, organ or cadaver, or a nonhuman
animal used in medical research or instruction directly relating
to the treatment of humans.

(F) the term
“patented use of a composition of matter” does not include a
claim for a method of performing a medical or surgical procedure
on a body that recites the use of a composition of matter where
the use of that composition of matter does not directly
contribute to achievement of the objective of the claimed
method.

(G) the term
“State” shall mean any State or territory of the United States,
the District of Columbia, and the Commonwealth of Puerto
Rico.

(3) This subsection
does not apply to the activities of any person, or employee or agent
of such person (regardless of whether such person is a tax exempt
organization under section 501(c) of the Internal Revenue Code), who
is engaged in the commercial development, manufacture, sale,
importation, or distribution of a machine, manufacture, or composition
of matter or the provision of pharmacy or clinical laboratory services
(other than clinical laboratory services provided in a physician’s
office), where such activities are:

(A) directly
related to the commercial development, manufacture, sale,
importation, or distribution of a machine, manufacture, or
composition of matter or the provision of pharmacy or clinical
laboratory services (other than clinical laboratory services
provided in a physician’s office), and

(B) regulated
under the Federal Food, Drug, and Cosmetic Act, the Public
Health Service Act, or the Clinical Laboratories Improvement
Act.

(4) This subsection
shall not apply to any patent issued based on an application which has
an effective filing date before September 30, 1996.

35 U.S.C. 288
Action for infringement of a patent containing an invalid
claim.

[Editor Note: Applicable to all proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 288 (pre-AIA) for
the law otherwise applicable.]

Whenever a claim of a patent
is invalid, an action may be maintained for the infringement of a claim of the patent
which may be valid. The patentee shall recover no costs unless a disclaimer of the
invalid claim has been entered at the Patent and Trademark Office before the
commencement of the suit.

[Editor Note:
Not applicable to to proceedings
commenced on or after September 16, 2012. See
35 U.S.C.
288
for the law otherwise
applicable.]

Whenever, without deceptive
intention, a claim of a patent is invalid, an action may be maintained for the
infringement of a claim of the patent which may be valid. The patentee shall recover
no costs unless a disclaimer of the invalid claim has been entered at the Patent and
Trademark Office before the commencement of the suit.

35 U.S.C. 289
Additional remedy for infringement of design
patent.

Whoever during the term of a
patent for a design, without license of the owner, (1) applies the patented design,
or any colorable imitation thereof, to any article of manufacture for the purpose of
sale, or (2) sells or exposes for sale any article of manufacture to which such
design or colorable imitation has been applied shall be liable to the owner to the
extent of his total profit, but not less than $250, recoverable in any United States
district court having jurisdiction of the parties.

Nothing in this section shall
prevent, lessen, or impeach any other remedy which an owner of an infringed patent
has under the provisions of this title, but he shall not twice recover the profit
made from the infringement.

35 U.S.C. 290
Notice of patent suits.

The clerks of the courts of the
United States, within one month after the filing of an action under this title, shall
give notice thereof in writing to the Director, setting forth so far as known the
names and addresses of the parties, name of the inventor, and the designating number
of the patent upon which the action has been brought. If any other patent is
subsequently included in the action he shall give like notice thereof. Within one
month after the decision is rendered or a judgment issued the clerk of the court
shall give notice thereof to the Director. The Director shall, on receipt of such
notices, enter the same in the file of such patent.

(a) IN GENERAL.—The owner of a patent may
have relief by civil action against the owner of another patent that claims
the same invention and has an earlier effective filing date, if the
invention claimed in such other patent was derived from the inventor of the
invention claimed in the patent owned by the person seeking relief under
this section.

(b) FILING LIMITATION.—An action under
this section may be filed only before the end of the 1-year period beginning
on the date of the issuance of the first patent containing a claim to the
allegedly derived invention and naming an individual alleged to have derived
such invention as the inventor or joint inventor.

*NOTE: The provisions of
35 U.S.C. 291 (pre-AIA), as in
effect on
March 15, 2013, shall also apply to each
claim of an application for patent, and any patent issued thereon, for which the
first inventor to file provisions of the AIA apply (see
35 U.S.C. 100
(note)
), if such application or patent contains or contained
at any time—

(A) a claim to an invention having
an effective filing date as defined in
35 U.S.C.
100(i)
, that occurs before March 16, 2013;
or

(B) a specific reference under
35 U.S.C. 120 ,
121, or
365(c), to any
patent or application that contains or contained at any time such a
claim.

35 U.S.C. 291 (pre-AIA)
Interfering patents.

[Editor Note:
Not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see
35
U.S.C. 100 (note)
).* See
35 U.S.C. 291
for the law otherwise applicable.*]

The owner of an interfering
patent may have relief against the owner of another by civil action, and the court
may adjudge the question of validity of any of the interfering patents, in whole or
in part. The provisions of the second paragraph of
section
146
shall apply to actions brought under this
section.

*NOTE: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect on
March 15, 2013, shall also apply to each
claim of an application for patent, and any patent issued thereon, for which the
first inventor to file provisions of the AIA apply (see
35 U.S.C. 100
(note)
), if such application or patent contains or contained
at any time—

(A) a claim to an invention having
an effective filing date as defined in
35 U.S.C.
100(i)
, that occurs before March 16, 2013;
or

(B) a specific reference under
35 U.S.C. 120 ,
121, or
365(c), to any
patent or application that contains or contained at any time such a
claim.

35 U.S.C. 292
False marking.

(a)

Whoever, without
the consent of the patentee, marks upon, or affixes to, or uses in
advertising in connection with anything made, used, offered for sale,
or sold by such person within the United States, or imported by the
person into the United States, the name or any imitation of the name
of the patentee, the patent number, or the words “patent,” “patentee,”
or the like, with the intent of counterfeiting or imitating the mark
of the patentee, or of deceiving the public and inducing them to
believe that the thing was made, offered for sale, sold, or imported
into the United States by or with the consent of the patentee;
or

Whoever marks
upon, or affixes to, or uses in advertising in connection with any
unpatented article the word “patent” or any word or number importing
the same is patented, for the purpose of deceiving the public;
or

Whoever marks
upon, or affixes to, or uses in advertising in connection with any
article the words “patent applied for,” “patent pending,” or any word
importing that an application for patent has been made, when no
application for patent has been made, or if made, is not pending, for
the purpose of deceiving the public—

Shall be fined not more
than $500 for every such offense. Only the United States may sue for the
penalty authorized by this subsection.

(b) A person who has
suffered a competitive injury as a result of a violation of this section may
file a civil action in a district court of the United States for recovery of
damages adequate to compensate for the injury.

(c) The marking of a product, in a manner
described in subsection (a), with matter relating to a patent that covered
that product but has expired is not a violation of this section.

35 U.S.C. 293
Nonresident patentee; service and notice.

Every patentee not residing in
the United States may file in the Patent and Trademark Office a written designation
stating the name and address of a person residing within the United States on whom
may be served process or notice of proceedings affecting the patent or rights
thereunder. If the person designated cannot be found at the address given in the last
designation, or if no person has been designated, the United States District Court
for the Eastern District of Virginia shall have jurisdiction and summons shall be
served by publication or otherwise as the court directs. The court shall have the
same jurisdiction to take any action respecting the patent or rights thereunder that
it would have if the patentee were personally within the jurisdiction of the
court.

35 U.S.C. 294
Voluntary arbitration.

(a) A contract involving a
patent or any right under a patent may contain a provision requiring
arbitration of any dispute relating to patent validity or infringement
arising under the contract. In the absence of such a provision, the parties
to an existing patent validity or infringement dispute may agree in writing
to settle such dispute by arbitration. Any such provision or agreement shall
be valid, irrevocable, and enforceable, except for any grounds that exist at
law or in equity for revocation of a contract.

(b) Arbitration of such
disputes, awards by arbitrators, and confirmation of awards shall be
governed by title 9, to the extent such title is not inconsistent with this
section. In any such arbitration proceeding, the defenses provided for
under
section 282 shall be
considered by the arbitrator if raised by any party to the
proceeding.

(c) An award by an
arbitrator shall be final and binding between the parties to the arbitration
but shall have no force or effect on any other person. The parties to an
arbitration may agree that in the event a patent which is the subject matter
of an award is subsequently determined to be invalid or unenforceable in a
judgment rendered by a court of competent jurisdiction from which no appeal
can or has been taken, such award may be modified by any court of competent
jurisdiction upon application by any party to the arbitration. Any such
modification shall govern the rights and obligations between such parties
from the date of such modification.

(d) When an award is made by
an arbitrator, the patentee, his assignee or licensee shall give notice
thereof in writing to the Director. There shall be a separate notice
prepared for each patent involved in such proceeding. Such notice shall set
forth the names and addresses of the parties, the name of the inventor, and
the name of the patent owner, shall designate the number of the patent, and
shall contain a copy of the award. If an award is modified by a court, the
party requesting such modification shall give notice of such modification to
the Director. The Director shall, upon receipt of either notice, enter the
same in the record of the prosecution of such patent. If the required notice
is not filed with the Director, any party to the proceeding may provide such
notice to the Director.

(e) The award shall be
unenforceable until the notice required by subsection (d) is received by the
Director.

35 U.S.C. 295
Presumption: Product made by patented process.

In actions alleging infringement
of a process patent based on the importation, sale, offered for sale, or use of a
product which is made from a process patented in the United States, if the court
finds—

(1) that a substantial
likelihood exists that the product was made by the patented process,
and

(2) that the plaintiff has
made a reasonable effort to determine the process actually used in the
production of the product and was unable so to determine, the product shall
be presumed to have been so made, and the burden of establishing that the
product was not made by the process shall be on the party asserting that it
was not so made.

35 U.S.C. 296
Liability of States, instrumentalities of States, and State
officials for infringement of patents.

(a) IN GENERAL.—Any State,
any instrumentality of a State, and any officer or employee of a State or
instrumentality of a State, acting in his official capacity, shall not be
immune, under the eleventh amendment of the Constitution of the United
States or under any other doctrine of sovereign immunity, from suit in
Federal court by any person, including any governmental or nongovernmental
entity, for infringement of a patent under
section
271
, or for any other violation under this
title.

(b) REMEDIES.—In a suit
described in subsection (a) for a violation described in that subsection,
remedies (including remedies both at law and in equity) are available for
the violation to the same extent as such remedies are available for such a
violation in a suit against any private entity. Such remedies include
damages, interest, costs, and treble damages under
section
284
, attorney fees under
section
285,
and the additional remedy for infringement of
design patents under
section
289
.

35 U.S.C. 297
Improper and deceptive invention promotion.

(a) IN GENERAL.— An
invention promoter shall have a duty to disclose the following information
to a customer in writing, prior to entering into a contract for invention
promotion services:

(1) the total number
of inventions evaluated by the invention promoter for commercial
potential in the past 5 years, as well as the number of those
inventions that received positive evaluations, and the number of those
inventions that received negative evaluations;

(2) the total number
of customers who have contracted with the invention promoter in the
past 5 years, not including customers who have purchased trade show
services, research, advertising, or other nonmarketing services from
the invention promoter, or who have defaulted in their payment to the
invention promoter;

(3) the total number
of customers known by the invention promoter to have received a net
financial profit as a direct result of the invention promotion
services provided by such invention promoter;

(4) the total number
of customers known by the invention promoter to have received license
agreements for their inventions as a direct result of the invention
promotion services provided by such invention promoter;
and

(5) the names and
addresses of all previous invention promotion companies with which the
invention promoter or its officers have collectively or individually
been affiliated in the previous 10 years.

(b) CIVIL ACTION.—

(1) Any customer who
enters into a contract with an invention promoter and who is found by
a court to have been injured by any material false or fraudulent
statement or representation, or any omission of material fact, by that
invention promoter (or any agent, employee, director, officer,
partner, or independent contractor of such invention promoter), or by
the failure of that invention promoter to disclose such information as
required under subsection (a), may recover in a civil action against
the invention promoter (or the officers, directors, or partners of
such invention promoter), in addition to reasonable costs and
attorneys’ fees—

(A) the amount
of actual damages incurred by the customer; or

(B) at the
election of the customer at any time before final judgment is
rendered, statutory damages in a sum of not more than $5,000, as
the court considers just.

(2) Notwithstanding
paragraph (1), in a case where the customer sustains the burden of
proof, and the court finds, that the invention promoter intentionally
misrepresented or omitted a material fact to such customer, or
willfully failed to disclose such information as required under
subsection (a), with the purpose of deceiving that customer, the court
may increase damages to not more than three times the amount awarded,
taking into account past complaints made against the invention
promoter that resulted in regulatory sanctions or other corrective
actions based on those records compiled by the Commissioner of Patents
under subsection (d).

(c) DEFINITIONS.— For
purposes of this section—

(1) a “contract for
invention promotion services” means a contract by which an invention
promoter undertakes invention promotion services for a
customer;

(2) a “customer” is
any individual who enters into a contract with an invention promoter
for invention promotion services;

(3) the term
“invention promoter” means any person, firm, partnership, corporation,
or other entity who offers to perform or performs invention promotion
services for, or on behalf of, a customer, and who holds itself out
through advertising in any mass media as providing such services, but
does not include—

(A) any
department or agency of the Federal Government or of a State or
local government;

(B) any
nonprofit, charitable, scientific, or educational organization,
qualified under applicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986;

(C) any person
or entity involved in the evaluation to determine commercial
potential of, or offering to license or sell, a utility patent
or a previously filed nonprovisional utility patent
application;

(D) any party
participating in a transaction involving the sale of the stock
or assets of a business; or

(E) any party
who directly engages in the business of retail sales of products
or the distribution of products; and

(4) the term
“invention promotion services” means the procurement or attempted
procurement for a customer of a firm, corporation, or other entity to
develop and market products or services that include the invention of
the customer.

(d) RECORDS OF COMPLAINTS.—

(1) RELEASE OF
COMPLAINTS.— The Commissioner of Patents shall make all complaints
received by the Patent and Trademark Office involving invention
promoters publicly available, together with any response of the
invention promoters. The Commissioner of Patents shall notify the
invention promoter of a complaint and provide a reasonable opportunity
to reply prior to making such complaint publicly
available.

(2) REQUEST FOR
COMPLAINTS.— The Commissioner of Patents may request complaints
relating to invention promotion services from any Federal or State
agency and include such complaints in the records maintained under
paragraph (1), together with any response of the invention
promoters.

35 U.S.C. 298
Advice of counsel.

The failure of an infringer to obtain the advice of counsel with respect
to any allegedly infringed patent, or the failure of the infringer to present such
advice to the court or jury, may not be used to prove that the accused infringer
willfully infringed the patent or that the infringer intended to induce infringement
of the patent.

(Added Sept. 16, 2011, Public Law 112-29, sec. 17, 125 Stat. 284,
effective as to patents issued on or after Sept. 16, 2012, effective date revised
Public Law 112-274, sec. (1)(a), ___Stat. ___ as applicable to any civil action
commenced on or after Jan. 14, 2013.)

35 U.S.C. 299
Joinder of parties.

(a) JOINDER OF ACCUSED INFRINGERS.—With
respect to any civil action arising under any Act of Congress relating to
patents, other than an action or trial in which an act of infringement under
section
271(e)(2) has been pled, parties that are accused
infringers may be joined in one action as defendants or counterclaim
defendants, or have their actions consolidated for trial, only if—

(1) any right to relief is asserted
against the parties jointly, severally, or in the alternative with
respect to or arising out of the same transaction, occurrence, or
series of transactions or occurrences relating to the making, using,
importing into the United States, offering for sale, or selling of the
same accused product or process; and

(2) questions of fact common to all
defendants or counterclaim defendants will arise in the
action.

(b) ALLEGATIONS INSUFFICIENT FOR
JOINDER.— For purposes of this subsection, accused infringers may not be
joined in one action as defendants or counterclaim defendants, or have their
actions consolidated for trial,based solely on allegations that they each
have infringed the patent or patents in suit.

(c) WAIVER.—A party that is an accused
infringer may waive the limitations set forth in this section with respect
to that party.

35 U.S.C. 301
Citation of prior art and written statements.

(a) IN GENERAL.—Any person at any time
may cite to the Office in writing—

(1) prior art consisting of patents
or printed publications which that person believes to have a bearing
on the patentability of any claim of a particular patent; or

(2) statements of the patent owner
filed in a proceeding before a Federal court or the Office in which
the patent owner took a position on the scope of any claim of a
particular patent.

(b) OFFICIAL FILE.—If the person citing
prior art or written statements pursuant to subsection (a) explains in
writing the pertinence and manner of applying the prior art or written
statements to at least 1 claim of the patent, the citation of the prior art
or written statements and the explanation thereof shall become a part of the
official file of the patent.

(c) ADDITIONAL INFORMATION.—A party that
submits a written statement pursuant to subsection (a)(2) shall include any
other documents, pleadings, or evidence from the proceeding in which the
statement was filed that addresses the written statement.

(d) LIMITATIONS.—A written statement
submitted pursuant to subsection (a)(2), and additional information
submitted pursuant to subsection (c), shall not be considered by the Office
for any purpose other than to determine the proper meaning of a patent claim
in a proceeding that is ordered or instituted pursuant to section
304,
314, or
324. If any such written
statement or additional information is subject to an applicable protective
order, such statement or information shall be redacted to exclude
information that is subject to that order.

(e) CONFIDENTIALITY.—Upon the written
request of the person citing prior art or written statements pursuant to
subsection (a), that person’s identity shall be excluded from the patent
file and kept confidential.

35 U.S.C. 302
Request for reexamination.

Any person at any time may file a
request for reexamination by the Office of any claim of a patent on the basis of any
prior art cited under the provisions of
section 301. The
request must be in writing and must be accompanied by payment of a reexamination fee
established by the Director pursuant to the provisions of
section
41
. The request must set forth the pertinency and manner of
applying cited prior art to every claim for which reexamination is requested. Unless
the requesting person is the owner of the patent, the Director promptly will send a
copy of the request to the owner of record of the patent.

35 U.S.C. 303
Determination of issue by Director.

(a) Within three months
following the filing of a request for reexamination under the provisions of
section
302
, the Director will determine whether a
substantial new question of patentability affecting any claim of the patent
concerned is raised by the request, with or without consideration of other
patents or printed publications. On his own initiative, and any time, the
Director may determine whether a substantial new question of patentability
is raised by patents and publications discovered by him or cited under the
provisions of section
301 or
302.
The existence of a substantial new question of patentability is not
precluded by the fact that a patent or printed publication was previously
cited by or to the Office or considered by the Office.

(b) A record of the
Director’s determination under subsection (a) of this section will be placed
in the official file of the patent, and a copy promptly will be given or
mailed to the owner of record of the patent and to the person requesting
reexamination, if any.

(c) A determination by the
Director pursuant to subsection (a) of this section that no substantial new
question of patentability has been raised will be final and nonappealable.
Upon such a determination, the Director may refund a portion of the
reexamination fee required under
section
302.

35 U.S.C. 304
Reexamination order by Director.

If, in a determination made under
the provisions of sub
section 303(a), the Director
finds that a substantial new question of patentability affecting any claim of a
patent is raised, the determination will include an order for reexamination of the
patent for resolution of the question. The patent owner will be given a reasonable
period, not less than two months from the date a copy of the determination is given
or mailed to him, within which he may file a statement on such question, including
any amendment to his patent and new claim or claims he may wish to propose, for
consideration in the reexamination. If the patent owner files such a statement, he
promptly will serve a copy of it on the person who has requested reexamination under
the provisions of
section 302. Within a period of
two months from the date of service, that person may file and have considered in the
reexamination a reply to any statement filed by the patent owner. That person
promptly will serve on the patent owner a copy of any reply filed.

After the times for filing the
statement and reply provided for by
section 304
have expired, reexamination will be conducted according to the procedures established
for initial examination under the provisions of
sections 132 and
133. In any reexamination proceeding under this chapter, the
patent owner will be permitted to propose any amendment to his patent and a new claim
or claims thereto, in order to distinguish the invention as claimed from the prior
art cited under the provisions of
section 301, or
in response to a decision adverse to the patentability of a claim of a patent. No
proposed amended or new claim enlarging the scope of a claim of the patent will be
permitted in a reexamination proceeding under this chapter. All reexamination
proceedings under this section, including any appeal to the Patent Trial and Appeal
Board, will be conducted with special dispatch within the Office.

35 U.S.C. 305 (pre-AIA)
Conduct of reexamination proceedings.

[Editor Note:
Not applicable to any patent issuing
from an application subject to the first inventor to file provisions of the AIA
(see
35
U.S.C. 100 (note)
). See
35 U.S.C. 305 for the law
otherwise applicable.]

After the times for filing the
statement and reply provided for by
section 304 have expired,
reexamination will be conducted according to the procedures established for initial
examination under the provisions of
sections 132 and
133. In any reexamination proceeding under this chapter, the
patent owner will be permitted to propose any amendment to his patent and a new claim
or claims thereto, in order to distinguish the invention as claimed from the prior
art cited under the provisions of
section 301, or in response to a
decision adverse to the patentability of a claim of a patent. No proposed amended or
new claim enlarging the scope of a claim of the patent will be permitted in a
reexamination proceeding under this chapter. All reexamination proceedings under this
section, including any appeal to the Board of Patent Appeals and Interferences, will
be conducted with special dispatch within the Office.

35 U.S.C. 306
Appeal.

The patent owner involved in a
reexamination proceeding under this chapter may appeal under the provisions of
section 134, and may seek court review under the provisions of
sections 141 to 144, with respect to any decision adverse to
the patentability of any original or proposed amended or new claim of the
patent.

(a) In a reexamination
proceeding under this chapter, when the time for appeal has expired or any
appeal proceeding has terminated, the Director will issue and publish a
certificate canceling any claim of the patent finally determined to be
unpatentable, confirming any claim of the patent determined to be